Canada: Final Countdown: Time To Prepare For Significant Amendments To Canada's Trademark Law

Last Updated: April 29 2019
Article by Jayde Wood

Significant amendments to the Trade-marks Act were passed in 2014 and will come into force on 17 June 2019. These amendments aim to modernize Canadian trademark laws and practice, as Canada moves to accede to major international IP treaties, including the Singapore Treaty, the Madrid Protocol, and the Nice Agreement. These amendments will affect how Canadian trademark applications are filed, examined, registered and maintained. Some highlights are discussed below.

"Use" Requirement for Registration Eliminated

Currently, a trademark application may be filed on the basis of actual use, proposed use in Canada, and/or foreign registration and use abroad. A trademark application based on proposed use will not mature into a registration until the mark is used in Canada and a Declaration of Use is filed.

The legislative amendments eliminate filing grounds and commencement of "use" as a registration requirement. Thus, as of 17 June 2019, an application can be filed without specifying any filing grounds and a Declaration of Use will no longer be required for an application to mature into a registration. This means that:

  • pending applications that have not been advertised before 17 June 2019 can optionally be revised to remove filing grounds; and
  • pending applications for which the only outstanding formality is filing of a Declaration of Use can proceed to registration simply by paying the registration fee after 17 June 2019.

In the absence of a use requirement for registration, we expect to see increased filing activity in Canada, including more trademark troll filings. Thus appropriate defensive filings in Canada should be considered, preferably at an early date to block subsequent filings by others.

Use Still Required for Enforcement and Maintenance

Although the legislative amendments eliminate the use requirement for registration, use is still relevant. In particular, use is required to enforce a trademark registration within three years of registration. Further, after three years of registration, a registration may be expunged or restricted for non-use if the trademark is not used within any consecutive three-year period in association with all of the goods and services covered by the registration. Additionally, the lack of use in Canada or an intention to use the trademark in Canada will be a ground of opposition.

Nice Classification & Fees

Currently, applicants and registrants are not required to classify their goods and/or services according the Nice Classification. Filing and renewal fees are flat and not based on the number of Nice classes of goods and services.

The legislative amendments require that applicants and registrants classify their goods and/or services according the Nice Classification. Filing and renewal fees will be assessed on a fee-per-class basis. For example, the new filing fee will be $330 for the first class and $100 for each additional class of goods and services. This is to be contrasted with the currently flat filing fee of $250 combined with a $200 registration fee, regardless of the number of classes of goods and services.

It would be cost effective to file multi-class trademark applications before the amendments come into force on 17 June 2019 to benefit from the current flat filing fee. Similarly, payment of renewal fees prior to 17 June 2019 will allow holders of multi-class registrations to benefit from the current flat fee regime regardless of the number of Nice classes covered by their registrations, whereas payment of renewal fees after 17 June 2019 will involve higher costs for multi-class registrations.

Shortened Renewal Period

Currently, a trademark registration must be renewed every 15 years. The legislative amendments reduce this renewal period to 10 years for registrations issued after 17 June 2019, and for registrations with an effective renewal date that is after 17 June 2019. This means that, although renewal costs can be lowered by paying the renewal fees prior to 17 June 2019, if the renewal deadline is after that date, the shorter 10-year term will apply.

Madrid Protocol

As of 17 June 2019, Canada will become a member of the Madrid Protocol. The Madrid Protocol provides a centralized system for filing, registering, and managing trademarks worldwide. A single application under the Madrid Protocol can afford trademark protection in up to 119 countries.

Relaxed Requirements for Claiming Priority

After the new legislation comes into force, it will be possible to claim priority to an application filed in any country that is a party to the Paris Convention, not just the country of origin of the applicant.

Divisional Applications

The legislative amendments make it possible to divide and merge applications in Canada. This can be a useful strategy during prosecution and opposition. For example, an applicant may carve out some problematic goods and/or services that are subject to a confusion objection and include them in a divisional application while the rest of the original application proceeds to registration. When the divisional application proceeds to registration, it may be merged with the original registration so only one renewal fee applies.

Expanded Definition of "Trademark"

The legislative amendments expand the definition of trademark to include non-traditional trademarks: a sound, hologram, moving image (i.e. motion mark), scent, taste, colour per se, a three-dimensional shape, a mode of packaging goods, a texture, or a positioning of a sign. These non-traditional trademarks are registrable if they have acquired distinctiveness at the filing date of the application. During examination, Examiner will be able to make distinctiveness objections and request evidence of acquired distinctiveness in Canada. Such evidence may be filed in the form of an affidavit or statutory declaration.

Concluding Remarks

The legislative amendments will significantly change Canada's trademark law. Applicants and registrants are encouraged to develop strategies as to how they can take advantage of the current trademark registration system and prepare for the new system.

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
Similar Articles
Relevancy Powered by MondaqAI
Fross Zelnick Lehrman & Zissu, PC
 
In association with
Practice Guides
by Mondaq Advice Centres
Relevancy Powered by MondaqAI
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Fross Zelnick Lehrman & Zissu, PC
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions