Canada: New Trademark Regime

The long-awaited new Canadian trademark regime came into force on June 17, 2019. In its final form, the most significant changes include the following:

Registration

  • classification of goods and services based on the Nice Classification;
  • a per-class fee structure ($330 CDN for the first class and $100 CDN for each additional class for applications filed online; paper filings will cost more)
  • a registration term of 10 years (as opposed to the prior 15-year term, still applicable, though, to registrations with a renewal date prior to June 17, 2019)
  • elimination of requirement to claim a specific use basis for trademark applications (all applications will be filed on the basis of "use or proposed use in Canada")
  • elimination of Declarations of Use requirement to secure registration, including for currently pending proposed use applications
  • adoption of the Madrid Protocol (see further comments below)

Practice Points

New Applications:

  • With respect to applications filed on or after June 17, 2019, examiners will determine whether or not additional classes are required to cover the specifications in the application, and applicants will have to pay class fees for each additional class required by the examiner; deleting or amending the goods/services for any added class(es) will not be an option. Accordingly, applicants should review their specifications carefully before filing, to avoid any $100 additional per class fee(s) for goods or services which may not be of principal interest.

Pending Allowed Applications:

  • Applications which matured to registration prior to June 17th will have a 15-year term (as opposed to 10 years under the new regime).
  • Any application that was not advertised before June 17th will not be approved for advertisement or advertised on or after that date if it has not been classified. The Trademarks Office assigns classes on filing if they have not been included; also, about a year or so ago, the Office added class details to all registrations. These are not substitutes for applicant/registrant classification.

Renewals (fee structure, classification, and timing):

  • Fee structure: The official fee for renewals that were processed before June 17th remained a flat fee of $350 CDN (about $265 USD), regardless of the number of classes. As of June 17th, however, renewals are subject to a fee of $400 CDN (approximately $305 USD) for the first class, and an additional $125 CDN (approximately $95 USD) for each additional class.
  • Term: The renewal term will depend on whether the registration was due before June 17, 2019 or after. As of that date, the renewal term was shortened from 15 to 10 years for all marks due for renewal as of June 17th. If the actual renewal date was on or after the "coming into force" date of June 17th, it was not possible to stretch the renewal to 15 years even if processed before that date.
  • Classification: As of June 17th, goods/ services in registrations will need to be classified before renewal will be processed. To save the per-class fees, registrants may wish to pare down coverage as appropriate to their business, prior to renewing.

Other changes

  • expanded coverage for nontraditional marks
  • a "bad faith" basis for opposition/ expungement
  • possible registrar-initiated non-use proceedings
  • potentially more rigorous examination for distinctiveness, including for nontraditional marks
  • enhanced customs and anti-counterfeiting provisions
  • elimination of documentary proof requirement when recording assignments and mergers (although the CIPO may request such documentation later)
  • repeal of associated marks provision, such that it will no longer be necessary to record changes such as assignments and mergers against all associated marks
  • a new option of drawing attention to prior applications/registrations during Examination, analogous to U.S. Letters of Protest

Division of applications/registrations

In addition, it will now be possible to divide a pending application or existing registration. The scope of goods/services covered, however, will depend on when a divisional application is filed. If filed before the original application is published, the divided goods must fall within the specifications of the original application. If filed after publication, the scope must be within the original application on the date the original application is published.

It will also be possible to sub-divide divisional applications, and merge divided applications back together after they have registered.

Madrid Protocol Considerations

As was the case when the U.S. joined Madrid, there are certain important features of the Canadian registration system which should be borne in mind when considering whether to rely on a Madrid Protocol filing including, but not limited to, the following:

  • While use is not required at filing or to secure a registration, applicants filing based on proposed use may still be called on to demonstrate an intent to use the mark in Canada.
  • The owner of an unregistered mark may oppose an application and/or object to use of a third-party mark, based on common law rights.
  • Applicants for non-traditional, or other marks that may not be considered inherently distinctive, should expect more rigorous examination, including especially the need to prove acquired distinctiveness in Canada.
  • Bad faith has been added as a basis for opposition.
  • Specifications of goods and services must be more detailed than in many other jurisdictions, and applications may be refused, or in certain circumstances possibly even considered to indicate bad faith, if specifications are overly broad.

While there are clearly cost savings to be gained from filing based on the Madrid Protocol, as with any local filing, strategies should include prior clearance for registered and unregistered rights, as well as considerations relating to coverage and distinctiveness.

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
 
In association with
Practice Guides
by Mondaq Advice Centres
Relevancy Powered by MondaqAI
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
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