Canada: Planning Ahead: Preparing For Changes To Canadian Trademark Law

Last Updated: August 23 2017
Article by Cynthia Rowden, Terry Edwards and Meghan Dillon

The most recent estimate for implementation of the amendments to the Trademarks Act (also known as the coming into force, or CIF date) is early 2019. Draft Regulations have been published, providing more information on how many of the new provisions will be implemented. The changes will bring opportunities for Canadian and international trademark owners and it is not too early to plan for them. The following reviews the current, and proposed changes to, rules on filing, renewal, opposition and cancellation proceedings, highlights some transition issues and offers tips for trademark strategy now and following the implementation of the amendments.

1. Trademark Filing

- Trademarks: Now, accepted marks include words, designs, distinguishing guises (shapes of goods/packages) and sounds. Letters and numbers are also registrable. Colour alone is not registrable. As of the CIF date, acceptable marks will also include signs such as colour, moving images, modes of packaging, figurative elements, scent, taste, texture and positioning of marks. However, most non-traditional marks will require evidence of distinctiveness in Canada to obtain registration.

TIP: Since number, letter and sound marks may now be registrable without evidence of distinctiveness, it would be advisable to file such marks before the CIF date.

- Goods and Services: Now, the Nice Classification is not mandatory, but the Trademarks Office is actively encouraging voluntary classification. Where instructions are received with class information, we are including classes in new filings. If not, we may select classes (if clear), or may seek your instructions later on class headings. The Trademarks Office has informally classified all registrations and pending applications. We suggest you review classifications in existing registrations. Once we are within about two months of the CIF date, pending applications that have not yet been classified will require classification to proceed. On the CIF date, classification will be required for all new applications, and transition rules will apply to phase in classification for all registered marks.

TIP: Since classification will be required for all applications pending as of the CIF date, having to add classes may delay prosecution, including classes now is advised. While classification of registrations can also be done at any time, for any multi-class registration, it may be preferable to postpone classification until either requested by the Trademarks Office to do so or closer to renewal.

- Fees: Now, there is a single government filing fee ($250CA for online applications), regardless of the number of classes of goods/services. The draft Regulations propose that from the CIF date, government filing fees will be $330CA for one class, and $100CA for each additional class for applications filed online ($100CA more for paper applications).

TIP: Given the increase in fees for multi-class applications, filing now, while filing fees are lower, is advisable. Also, as noted below, "use" as a registration requirement will be eliminated, and applications filed (regardless of filing grounds) now will probably be registrable without use, anywhere. This offers strategies for maximizing rights that should be discussed with your trademark advisor.

- Filing Grounds: Now, applicants must identify a filing ground, which can be any of proposed use in Canada, use in Canada (with a date of first use in Canada required for each general class of goods/services), and/or use anywhere plus a home country application or registration. If proposed use is relied upon, a declaration of use must be filed before registration. If use and registration is relied upon, a certified copy of the home country registration must be filed before approval. On the CIF date, filing grounds will no longer be required, and any applicant who has used, or intends to use its mark may file. For applications already filed and still pending as of the CIF date, a declaration of use will no longer be required, and it will not be necessary to submit a certified copy of any home country registration.

TIP: Currently, there are accepted guidelines for extending deadlines to file declarations of use before registration. By keeping an application pending until the CIF date, it may be possible to register marks for broader lists of goods/services. However, keep in mind that at any time following the third anniversary of a registration, it may be challenged by a third party for non-use, and failure to show use in Canada, or special circumstances excusing non-use, may result in cancellation of the registration.

- Priority Claims: Now, priority claims may be added to a Canadian application based on a first-filed "country of origin", or home country, application or registration for the specific goods/services, if the Canadian application is filed, and the priority claim added, within six months of the home country filing. No extensions of that date are permitted, and the claim cannot be withdrawn. As of the CIF date, it will be possible to base a priority claim on any first-filed application in a country of the Union. One seven day extension, filed after the original priority deadline, may be permitted. It will also be possible to withdraw the claim.

-Examination: Now, examination by the Trademarks Office of new applications is based on specific grounds of entitlement and registrability. From the CIF date, examination will also be based on distinctiveness, and examiners will be permitted to request evidence of distinctiveness in Canada. It is not certain what evidence will suffice to demonstrate such distinctiveness.

- Overcoming Name/Surname and Descriptiveness Objections: Now, any objection based on name/surname significance or clear descriptiveness may be overcome by filing evidence that the mark had already become distinctive in Canada at the filing date (s. 12(2)), or, if the mark is also registered by the applicant elsewhere, that the mark is not without distinctive character in Canada, including by virtue of use elsewhere (s. 14). The second exception is used by non-Canadian applicants and is generally viewed as having a lower threshold of evidence. As of the CIF date, s. 14 exceptions will be eliminated, and we understand that any owners of applications that are relying on s. 14 to overcome name/descriptiveness objections that have not yet been advertised as of the CIF date will be advised at that time that they must file suitable evidence of distinctiveness in Canada, which may require additional affidavits or may not be feasible at all.

TIP: Many practitioners believe that given the time and effort required to compile acceptable evidence under s. 14, prepare and file the necessary affidavits, and have the evidence reviewed by the Trademarks Office, taking those steps may no longer be practical given the upcoming changes eliminating s. 14 claims.

Letters of Protest: Now, during examination, the Trademarks Office refuses to review any correspondence relating to an application from a party other than the applicant or its agent. A third party may not attempt to draw its rights to the attention of an examiner in the hope of prompting a confusion citation. As of the CIF date, the Trademarks Office has proposed a procedure permitting correspondence from third parties, but it is expected that the Office will merely accept the letter, and that there will be no additional communication between the Office and third parties relating to such letters.

TIP: This new procedure, which will be explained in more detail in a practice notice expected to be published by the Trademarks Office closer to the CIF date, suggests that watch systems that may now focus on advertisements should also cover pending applications, giving trademark owners the chance to prompt examiners to make confusion objections and hopefully avoid costly opposition proceedings.

Allowance: Now, any application that is allowed either after the expiry of the opposition term or after a successfully defended opposition requires, before registration, payment of a registration fee, plus filing of a declaration of use if the application is based on proposed use. As of the CIF date, declarations of use will no longer be required. Registration fees will be payable for any application pending at the CIF date, but applications filed on or after the CIF date will no longer be subject to payment of a registration fee, and will issue to registration upon completion of the opposition term or following a successfully defended opposition.

TIP: See comments above regarding timing of declarations of use and whether it is advisable to file now, or hold off pending the CIF date to possibly acquire broader protection.

Registration: Now, registration certificates show full information on the applicant's filing basis, including any claims of use in Canada or abroad, or when a declaration of use is filed. After the CIF date, registrations will no longer include such details (based on the change regarding filing grounds). This will probably complicate risk analysis, making marketplace searching more important.

2. Renewal

- Term: Now, registrations are in force for renewable terms of fifteen years. As of the CIF date, the term will be ten years. The draft Regulations include complicated provisions for calculation of deadlines for registrations that are due for renewal after the CIF date but renewed before then, or registrations that are due for renewal before the CIF date, and renewed in a grace period after that date. In addition, any registrations due for renewal on or after the CIF date, but which are renewed prior to the CIF date, will be issued a new certificate of renewal clarifying that the term is only 10 years – a longer term cannot be acquired by early renewal of marks due for renewal after the CIF date.

- Grace Period: Now, the grace period is six months from the expiry of the renewal term. The draft Regulations set out two dates that will apply as of the CIF date, namely the latest of six months from the expiry of the term, or two months from the notice from the Trademarks Office of the failure to renew. Trademark professionals have commented that this is complicated and a single date is preferable.

- Renewal fees: Now, government fees for renewal are $350CA per mark, regardless of the number of goods/services. As of the CIF date, renewal fees will be calculated per class, which the draft Regulations set at $400CA for the first class, and $125CA for each additional class. There may be savings on class fees with early renewal, before the CIF date, but this will be clarified once the Regulations are finalized.

3. Madrid Protocol

Now, Canada is not a member of the Madrid Protocol. Canadians seeking international protection must do so by filing national or regional (eg. European Union) marks. Non-Canadians must file directly with the Canadian Trademarks Office. As of the CIF date, Canada will become a member, permitting Canadian companies to take advantage of streamlined foreign filing opportunities and also permitting non-Canadian applicants to designate Canada when using the Madrid Protocol to expand their international trademark protection.

TIP: Since the impact of Canada's accession to the Madrid Protocol will be to make international filings easier, not only for Canadian businesses seeking international trademark protection, but also for companies abroad to obtain Canadian rights, it is expected that after the CIF date, there will be even more filings in Canada by companies abroad. Trademark owners should assess now if their Canadian trademarks are well protected – and take steps to ensure that acquisition and enforcement of rights are not complicated by other applications.

4. Oppositions

Several changes are expected to opposition proceedings following the CIF date. The draft Regulations propose changes to the deadlines and order of proceedings (most specifically related to timing and impact of cross-examinations). The rules on "onus", which are not likely to change, will make it more difficult for opponents to show non-entitlement, both since "use" information will no longer be part of the filing information, and since it is likely going to be very difficult to show a lack of intent to use a mark. The Canadian Intellectual Property Office has estimated an increase in the volume of oppositions, likely resulting from a combination of more filings and broader goods/services lists related to the elimination of use requirements.

5. Non-use Cancellation Proceedings

Some changes will be made to procedure and timing. The elimination of use as a prerequisite to registration will result in many marks on the Register that are not used at all, or not used for some of the registered goods/services, with the result that there will likely be more challenges for non-use.

6. Transfers

Now, the Trademarks Office requires evidence to support a transfer arising from an assignment, merger or amalgamation. (No evidence is required for a change of name.) As of the CIF date, the Trademarks Office will only require the name and postal address of the transferee.

7. Associated Marks

Now, the Trademarks Office "associates" similar marks owned by the same company, with the result that any change (assignment, merger, and change of name or address) must be made against all associated marks. Failure to include any associated mark in the list of marks to be changed will prompt an objection from the Trademarks Office. As of the CIF date, the Office will no longer associate marks, and the implications for recording changes will be eliminated.

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.

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Authors
Cynthia Rowden
Meghan Dillon
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