Canada: From Trade-Marks To Trademarks: What Educational Institutions Should Expect From Canada's New Trademark Law

Last Updated: June 5 2019
Article by Neil Melliship and David Bowden

Is it "trade-marks" "trademarks" or "trade marks"?

Your answer likely depends on how much you care about grammatical rectitude as much as technical legal conformity, and how much content you consume from American sources (who use "trademark") and European sources (who use "trade mark"). Regardless, the legally correct answer in Canada is "trade-mark", that is, until June 17, when Canada will side with another major English-speaking country in the adopting the grammatically questionable "trademark".

This change, and other actually substantive changes to trademark law, are coming into force on June 17, 2019, with additional changes coming into force at some yet underdetermined time in the future. These changes are the most significant alteration of trademark law in more than half a century. They have prompted both outrage and optimism – but how will they affect educational institutions?

The answer depends on the composition of your institution's trademark portfolio, as most changes affect regular trademark registrations rather than official or prohibited marks. Some of the most significant changes include:

  • All applications must group goods and/or services according to the Nice Classification System, a system of classifying goods and services maintained by the World Intellectual Property Organization ("WIPO");
  • Application and renewal fees will be based on the number of Nice Classes included in the application/registration;
  • Filing bases will be eliminated, and an applicant will no longer need to identify a date of first use for goods and services or file a declaration of use prior to registration;
  • The definition of a "trademark" will be expanded to cover a wider range of distinguishing signs, such as scents, textures, and colours per se;
  • Examiners at the Canadian Intellectual Property Office ("CIPO") will be able to object to any application for a trademark on the grounds that it lacks distinctiveness;
  • The term of registration will shorten from 15 years to 10 years; and
  • CIPO will allow Canadian and foreign applicants and registrants to participate in the Madrid System, which allows trademark owners to apply for protection in countries around the world through a central application filed with WIPO.

One change that could specifically affect educational institutions is that any person or the Registrar, at its own initiative, will be able to summarily challenge an official mark on the grounds that the owner no longer exists or is not a public authority. This amendment will not apply to university marks (under section 9(1)(n)(ii) of the Trade-marks Act) but will apply to "Official Marks" granted to "public authorities" (under section 9(1)(n)(iii) of the Trade-marks Act) – so this change could affect your institution, depending on the subsection under which it protected its marks.  However, this change will not take effect on June 17, so stay tuned.

If your educational institution relies on regular trademarks in addition to university marks or official marks (an ideal strategy, if its within your budget), there are a few things that you should do now, before the changes come into effect:

  • renew your registrations before June 17 – regardless of when your renewal is due. Why? Renewal fees will increase (sometimes significantly) after June 17. The Office will accept the previous renewal fee prior to June 17 regardless of when the deadline for renewal falls;
  • file any new applications before June 17, as you can avoid the per-class fee calculations, which will reduce the overall costs of an application; and
  • adjust your internal monitoring systems to account for the change in term from 15 to 10 years for renewals which occur after June 17.

We have touched upon only a small number of the changes coming on June 17 and beyond. Many of the changes are complex, and some are unclear or ambiguous. If you're interested in learning more, or in doubt about their impact on your portfolio, call a trademark professional: we have been pouring over many of these changes and thinking about their potential impact for years now.

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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