Canada: The Countdown Is On! Changes To Canadian Trademark Law Coming June 2019

Significant changes are underway to Canadian trademark law and practice this year with an overhaul to legislation taking effect on June 17, 2019. Canada will accede to the Madrid Protocol, Nice Classification and Singapore Treaty, and there will be significant amendments to its Trademarks Act. These changes will impact filing, prosecution and maintenance, as well as trademark enforcement. Brand owners are advised to review their trademark portfolios and protection strategy in Canada in light of these developments. In particular, there might be significant cost savings to filing or renewing marks before the changes come into force.

Changes to Trademark Applications, Filings and Renewals

  • Filing grounds will be eliminated. It will no longer be necessary to indicate if an application is being filed on proposed use, use in Canada or use and registration abroad.
  • Use as a requirement for registration will be eliminated. In addition, it will no longer be necessary to file a Declaration of Use for applications filed based on proposed use in Canada - a significant change since use has been an underpinning of Canadian trademark law. However, there will be a new requirement to demonstrate use in the first three years after registration to enforce the resulting registration in the event of infringement.
  • Nice Classification will be required, accompanied by increased filing fees based on the number of classes covered - gone will be the days of a single filing fee for as many goods and services as an applicant would like to cover.
  • Registration fees will be eliminated.
  • The scope of protectable marks will be expanded considerably, including a broadening of acceptable non-traditional trademarks.
  • Examination for distinctiveness will be introduced.
  • Corrections and assignment recordals will be simplified.
  • "Associated marks" will be eliminated such that the requirement to record changes against all "associated" trademarks will be eliminated.
  • Division of applications and merger of registrations are being introduced.
  • A new informal procedure is being introduced whereby third parties can submit information about prior registered marks or prior applications to the Registrar which could impact on registration of an application in the case of confusion, non-entitlement or where a registered mark appears in the specification of goods/services.
  • The renewal term for trademark protection will be shortened from 15 to 10 years.

Changes to Oppositions and Summary Expungement Proceedings

  • Changes will impact on proceedings before the Opposition Board and appeals to Federal Court.
  • Changes range from procedural and technical to substantive.
  • Changes to grounds of opposition and bad faith will be added as a new ground of opposition and registration invalidation.
  • Increased powers for the Opposition Board giving the Registrar authority to award costs and to issue confidentiality orders concerning evidence filed. (These require regulations and there is no firm date for implementation as yet).
  • Case management of proceedings will be introduced. (Also requires regulations and there is no firm date for implementation as yet).
  • The automatic right to file evidence on appeal to the Federal Court and the requirement for leave to file evidence on an appeal of a Registrar's decision will be removed.

Preparing for the Changes

To prepare for these changes, brand owners should conduct an audit to determine:

  • What marks they are using in Canada.
  • What goods and/or services are marks being used with.
  • Are all the marks currently in use in Canada the subject of an application or registration.
  • Are all the goods and/or services with which each mark is used or contemplated covered by current applications or registrations.
  • For foreign brand owners, how do the Canadian marks and associated goods and/or services of record compare to what is registered in the home country.

Potential action items to consider before the new law comes into effect include the following:

  • File Early: The removal of the requirement that marks be used before registration in the new legislation has increased trademark trolling. Protect brands by filing early.
     
  • File Applications for New Marks: The adoption of Nice Classification of goods and services will bring per-class fees resulting in higher filing costs. Therefore, consider filing new applications in Canada as soon as possible for new marks to save on government fees and secure rights against third parties. The current filing fee of $250 CAD regardless of the number of classes of goods/services covered will increase after June 17 to $330 CAD for one class plus $100 for each additional class.
     
  • Fill in Gaps: To protect marks of interest, consider whether current coverage in existing applications and registrations properly reflects all the marks of interest, covers all goods and services of interest, and covers the current presentation of the marks. Fill in gaps by filing new applications to cover all important marks and goods and services. Brand owners may also wish to consider defensive filings.
     
  • Extend Coverage: Since it will no longer be necessary to have use before registration and proposed use applications will proceed to registration without the need to file Declarations of Use, consider filing to extend coverage to goods and services which might be used in future. This is of particular interest to brand owners who file in several classes given the government fee savings.
     
  • Renew Early: Existing registrations can be renewed at any time during their pendency (this too will change come June). The term for which a trademark is registered or renewed will be reduced from 15 years to 10 years. If the effective date of renewal for a registration is after June 17, the period will be 10 years. Renewing before June 17, is desirable since the current renewal fee is $350 CAD regardless of the number of classes. After June 17, there will be an increased fee of $400 CAD for one class, plus $125 for each additional class. Renewing early will therefore be less expensive, especially for brand owners who have registrations covering more than one class.

The content of this article does not constitute legal advice and should not be relied on in that way. Specific 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