Canada: Imminent Changes to Canadian Trade Mark Law

Last Updated: June 21 2019
Article by Oliver Gray

As reported in our article of 30 November 2018, changes to the Canadian Trade-marks Act 1985 will shortly enter into force on 17 June 2019. The key changes are summarised below.

Declarations of Use and Filing Bases

Following the changes, an applicant will be required to make a simple declaration at the time of filing a Canadian trade mark application that the mark is currently used or is intended to be used in Canada (which essentially mirrors the current position in the UK). This is significantly more straight-forward than the current requirement that an applicant identifies, in respect of each term in the specification of goods/services, whether the mark is in use (together with a date of first use) in Canada, or intended to be used in Canada, and/or is in use and registered abroad.

Introduction of the Nice Classification System

As noted in our earlier article, Canada will also adopt the Nice classification system, whereby an applicant must categorise the goods/services claimed in an application according to the 45 classes of the Nice system. The UK IPO has a helpful guide explaining the Nice classification system, which can be found here. Canada will allow multiple classes to be included in the same application, but there will be an additional class fee charged by the Canadian IPO (CIPO) of $100 CAD for each class beyond the first. The official fee for the initial application will also rise from $250 CAD to $330 CAD. All of this means that applicants filing Canadian trade mark applications are likely to see costs rise somewhat.

Canada's Accession to the Madrid Protocol

Perhaps the most significant change is that the Madrid Protocol will enter into force in Canada. The Madrid Protocol is an international system which enables the owner of a trade mark application/registration in the territory where they are resident/domiciled (or have a real and effective commercial establishment) to file a single application designating overseas territories of interest (insofar as those territories are also signatories to the Madrid Protocol). This application is centrally administered by the World Intellectual Property Organisation (WIPO), which forwards the applications to the relevant national IP offices for processing in the designated territories. Filing applications for International Registration is widely seen as being a more cost effective way of seeking trade mark protection in multiple jurisdictions, at least in most circumstances. It is also simpler to manage an International Registration post-grant than an equivalent series of national registrations, not least because there is a single renewal date and payment, and changes in the owner details can be centrally recorded at WIPO, all without the need to involve multiple overseas attorneys (which can easily lead to significant expense). Canada's accession to the Madrid Protocol will therefore introduce a potentially more efficient and cost-effective option for those wishing to protect their trade marks in Canada.

Other Changes

The changes to the law will also touch on various other elements of Canadian trade mark practice. For example, the CIPO will, in future, carry out a full examination of new trade mark applications for distinctiveness. Currently, insofar as the inherent character of a mark is concerned, an application will only be subject to an objection if the mark is descriptive/generic. The CIPO will also stop refusing trade mark applications on the basis of earlier conflicting trade marks, and will instead simply notify the owners of earlier trade mark rights when a potentially conflicting later application has been examined, thus shifting the onus onto the owner of the earlier mark to file an opposition if they wish to prevent the registration of the later mark.

Canada will now also accept applications for more non-traditional types of trade marks, such as sounds, holograms, colours, and position marks. It will also be possible, under the new law, to divide applications and merge existing registrations (subject to certain conditions), and it will no longer be necessary to provide documentary evidence of an assignment before it can be recorded on the trade mark register.

All of these changes will bring Canadian practice closer to the current practice of the UK IPO, which is arguably much less burdensome for trade mark owners.

If you have any questions relating to the issues raised in this article, please do contact your regular Dehns fee earner for specific advice tailored to your requirements.

Co-Author: Elaine Deyes, Trade Marks Partner

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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