Canada: Managing The Transition: The Impact Of Canada’s Amended Trademarks Act On Pending Trade-Mark Applications

The recent amendments to Canada's Trade-marks Act present many interesting opportunities and challenges to brand owners and their counsel.  This article focuses primarily on the impacts for Canadian trademark applications that are pending at the time the amended Act comes into force—that is, applications that have been filed with the Canadian Intellectual Property Office (CIPO) but that have not yet issued to registration.

As a preliminary comment, there is, unfortunately still no clarity about when the amendments to the Act will come into force. When the amending legislation was passed, CIPO initially indicated that the effective date could be as early as late 2014; subsequent projections were revised to mid-to-late 2015. More recent comments from CIPO suggest that mid-2016 is a more realistic timeframe.  The delay is apparently related to the magnitude of the IT changes required, particularly as connected to implementation of the Madrid  Protocol, to which Canada is becoming a party.

The amendments to the Act are set out in Bill C-31, which reached the last stage in the legislative approval process on June 19, 2014. Those amendments include a number of transitional provisions setting out the legislation's varied impacts for both registrations and applications, including for applications at different stages of the examination process, as at the date the amended Act comes into force (the Implementation Date). We'll look briefly at each of these in turn.

Registrations issued prior to the Implementation Date

Under the transition provisions, the amended Act will apply to registrations issued prior to the Implementation Date, with certain exceptions.  Most notably, following the Implementation Date the term of renewal for such registrations will be 10 years, as opposed to the 15 years provided under the current regime. The registration term is not being truncated for registrations issued prior to the Implementation Date; owners will have the benefit of their full 15-year registration terms. Upon renewal, however, only a 10-year term will be available. Of course, prior to the Implementation Date the current regime applies and owners can renew their registrations for 15-year terms.

This shift has led some owners to consider 'early' renewal, well in advance of the expiration of their existing registrations, in an effort to obtain the longer 15-year term. However, CIPO has indicated that if the registration anniversary falls after the Implementation Date, any renewal of the registration will be for a period of 10 years, regardless of whether the registered owner submitted the renewal fee and obtained a Certificate of Renewal from CIPO prior to the Implementation Date. CIPO takes this position despite its current practice of issuing renewal certificates at the time fees are paid (and not waiting for the anniversary of registration), with such certificates denoting a 15-year renewal term.  As part of the implementation process, CIPO officers have suggested these certificates may be revised to indicate that if the anniversary of registration falls after the Implementation Date, the registration period will be 10 years, despite other 15-year references on the certificate.

Applications that have been "allowed" prior to the Implementation Date

In the Canadian trademark system, once an application is "allowed", it means that the application has been approved by a CIPO Examiner for advertisement in the [image]Trade-marks Journal, it has been advertised in the Journal, that no one has filed a Statement of Opposition to that application (or if an Opposition has been commenced it has concluded in the applicant's favour or been withdrawn) and that a Notice of Allowance has been issued.  Allowance is the final step in the Canadian trademark prosecution process before an application is registered.

Under the transition provisions, if an application is allowed prior to the Implementation Date, then the applicant must only pay the registration fee to CIPO to obtain final registration.  This is true regardless of the original filing basis—whether the application was filed claiming prior use of the mark in Canada, filed on the basis of proposed use in Canada, filed on the basis of foreign use and registration, filed on the basis of the mark being 'made known' in Canada, or filed relying on a combination of these filing bases.  And to be clear, this means that for applications initially filed claiming proposed use in Canada, there will be no requirement to file a Declaration of Use.  That requirement, which exists under the current regime, will fall away.

The government has not yet set the deadline for submission of such registration fees; however, officials have informally suggested that the deadline will likely be six months from the Implementation Date and that if the registration fee is not paid by the deadline, the application will be deemed abandoned.  It is not known at this time whether the current registration fee (CAD $200.00) will be increased.

The amended Act also gives CIPO the ability to force applicants (and the owners of registered marks) to organize the goods and services claims associated with their marks into the applicable Nice classes. (Under the current regime, Canada does not use the Nice classification system.)

CIPO has not yet announced whether it will require the owners of allowed applications to organize their claimed goods and services as a pre-condition of registration. Practically, though, that appears unlikely given the sheer volume of allowed applications: there are currently tens of thousands of applications that are allowed but not yet registered with CIPO, where current legislation would require a Declaration of Use to be filed before the registration will issue.  In this light, the deletion of the Declaration of Use requirement through the amendments will create an unprecedented bulge in the number of registrations to issue in Canada in a very short period of time—taxing CIPO and rendering less likely that CIPO will simultaneously add to its burden by requiring owners to organize their claims into Nice classes as a condition of registration. That said, if CIPO adopts a system whereby registration cost is tied to the number of Nice classes implicated in a particular application, it may elect to require owners of allowed applications to organize their claims accordingly, both as a revenue generation mechanism, but also as a means to partially discourage "overbroad" applications from being registered.

Applications "advertised" but not "allowed" prior to the Implementation Date

To be "advertised", an application must be approved by a CIPO Examiner for publication in the Journal, and publication starts a 60 day opposition period.  If no oppositions are filed (or if commenced, are resolved in favour of the applicant or withdrawn) the application will be allowed.  However, this is not immediate: it is not uncommon for a couple of months to pass between the end of the opposition period and CIPO's issuance of a Notice of Allowance. Through this whole period, the application is given a status of "advertised"—and advertised applications, whether the advertisement period is still pending or has already expired, are treated the same way under the transitional provisions.

Broadly speaking, this category of applications is impacted in a manner similar to "allowed" applications discussed above. CIPO may require applicants to comply with the new Nice requirements contained in the amended Act—and it appears more likely that CIPO may impose this obligation upon this class of applications, whether contemporaneously with allowance of the application, or as a pre-condition to registration.

Aside from that, many of the most significant changes in the amended Act will not apply to advertised applications. Notable amongst these is the power given to Examiners under the amended Act to require proof of distinctiveness in Canada for virtually any mark for which registration is sought—which clearly contrasts from the current regime, where CIPO Examiners can only require such evidence in limited circumstances (such as for distinguishing guises and for marks that are otherwise seen as clearly descriptive or that primarily have name or surname significance).  Despite the powers provided under the new regime, Examiners will not be able to force owners of applications at this stage to provide proof of distinctiveness.

Applications that have been "approved" but not actually advertised as of the Implementation Date

Even if an application has been approved for advertisement prior to the Implementation Date, if that advertisement hasn't occurred before the Implementation Date, the application will be subject to all of the provisions of the amended Act, just like a brand new application filed after the Implementation Date.

Presumably the applicant will be required to submit an amended application in the form required by the amended Act—for example, removing all references to the bases for registration (prior use, proposed use, etc.) that are so important under the current regime. Additionally, owners will be required to group the claimed goods and services into the applicable Nice classes.  Interestingly, this appears to be largely an administrative exercise: despite imposing this obligation on applicants, the final decision on the appropriate classes for the claimed goods and services lies with the Registrar, with no right of appeal.  Moreover, the amended Act provides that the existence or lack of Nice class overlap is not a relevant consideration in confusion analyses. Given this, whether the applicant agrees with the Registrar's unappealable class allocation is less important—and, as a result, it is easy to imagine a scenario where applicants will direct their counsel to lump all goods and services into one class, leaving the issue for the Registrar to resolve (as opposed to paying counsel to develop a class allocation that can be unilaterally amended and upon which little hinges, at least from the legal perspective).

More positively, owners of these applications will be permitted to divide them, which is not permitted under the current regime. Additionally, any prior notice by CIPO of its intent to "associate" applications and registrations of the owner (which requires their common ownership) will no longer have any effect.

Still, on the whole, owners of these applications should expect increased application costs, as well as administrative delays in the prosecution process.

Applications that have been "formalized" or "examined" as of the Implementation Date, but not yet approved for advertisement

As with applications that are approved for advertisement but not yet advertised as of the Implementation Date,  applications that are formalized or examined will also be subject to the bulk of the provisions contained in the amended Act.  Again, applicants will likely be required to submit amended applications in the form required by the amended Act; restatement of goods and services into applicable Nice classes will be required; Examiners will be entitled to request proof of distinctiveness for non-conventional trademarks and for any mark where the Examiner believes the mark is not inherently distinctive.

Though the amended Act broadens the scope of what may be registered as a trademark, owners of pending applications will not be able to amend their applications to reflect a form of mark newly permitted under the new legislation if doing so would result in a substantial change to the trademark itself; instead, such applicants would need to file new applications.

Strategies for owners to consider, now:

  • Review core brands and consider filing applications now to fill in any "gaps", and to take advantage of opportunities for portfolio expansion that the amended Act may bring.  Being first to file will be even more important after the Implementation Date for a number of reasons, including to avoid having trademark "trolls" lodge applications ahead of legitimate owners, since under the amended Act, the use of a mark in Canada or anywhere else in the world will no longer be a prerequisite to Canadian registration.
  • Consider filing applications for marks now to avoid anticipated fee increases following the implementation of the Nice classification system.  Similarly, if registration can be obtained before the Implementation Date, the registration period will be 15 years, rather than the 10 years provided after the Implementation Date.
  • Consider filing applications now for non-traditional marks, rather than waiting until after the Implementation Date. This includes colours or combinations of colours, three-dimensional marks, sounds, scents, tastes and textures. This will allow owners to avoid the obligation under the amended Act to provide evidence of the mark's acquired distinctiveness in Canada as of the filing date (such requirement currently applying only to distinguishing guises and marks that are clearly descriptive/deceptively misdescriptive, or are primarily merely names/surnames ). Similarly, owners may wish to file applications now for marks in forms for which registration will be permissible under the amended Act that are prohibited under the current regime. Applications to register marks in such forms will become retrospectively permissible so long as the application remains pending as of the Implementation Date, and those applications will be further ahead in the queue of filings made by owners who wait for the amended Act to take force.
  • Finally, for current, pending applications based on proposed use where use of the mark in Canada is not likely to occur with all of the claimed goods and services until after the Implementation Date, consider strategically requesting ongoing extensions of time to delay filing the Declaration of Use and registration fee; instead wait until the Implementation Date at which time the requirement for a Declaration of Use will disappear.  Clearly determining when use of a mark has occurred in Canada is often difficult to discern due to conflicting Canadian caselaw (particularly in the context of services provided online or from a distance) and the consequences of making the wrong determination under the current Act can be harsh. Waiting until the amended Act comes into force and thereby avoiding the need to file a Declaration will at least allow these applicants to obtain registration – though questions remain about the validity/enforceability of registrations unsupported by use of the trademark within Canada, despite the ability to acquire such registrations under the new regime.

For legal advice regarding Canada's new Trademarks Act, please contact any member of our Technology and Intellectual Property Group.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Neil Melliship
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.