The Canadian Government in 2014 proposed amendment to the Trademarks Act. The Canadian Intellectual Property Office released draft Trademark Regulations for consultation and the finalized regulations were published in the Canadian Gazette1 on November 14, 2018. After nearly five (05) years of uncertainty and speculation, the much-awaited new Trademarks Act in Canada will come into force on June 17, 2019.
Under the new legislation, Canada will adopt and implement three (03) international treaties, namely:
- Singapore Treaty on the Law of Trademarks (Singapore Treaty)
- Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol)
- The Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement).
Accession to the aforementioned Treaties by Canada will foster international competitiveness for intellectual property owners and reduce cost and complexity of entering foreign markets. In addition, the federal government has committed C$85 million in funding over five years to develop an IP strategy, which includes IP awareness, education and strategic tools for owners.
TRADEMARK FILING NOW VS AFTERWARDS IN CANADA
1. File now to avoid hike of fees
Once the new law comes into effect in Canada, goods and services will need to be classified according to the Nice Classification system. Therefore, it is advisable that brand owners file application for their mark(s) before the new trademark law comes into effect, since the government filing fee will be increased to C$330 for the first class and an additional fee of C$100 will be payable for each class of goods/services covered by the application. Currently, the government filing fees are only C$250—regardless of how many goods and services one includes in their trademark application.
The easiest way to avoid the hike in fees is to file now!!!! Doing so will permit applicants to file multi-class applications while avoiding the fees for additional classes and securing rights to trademarks for which they will not be required to declare use prior to registration.
2. Declaration of use no longer required
The application filing process will be simplified since the previous requirement to include a basis for filing a trademark application will no longer be in effect.
The downside of the same is that it will allow an applicant to file for and obtain a trademark registration without ever having used that mark anywhere in the world and the same would increase the risk of trademark squatting.
Since, there will be no requirement for filing basis, it will be possible for any third party to register and own any mark in case the same has not been registered in Canada before. Therefore, under the new trademark law, being the first-to-file, an application will be highly important.
Under the current Canadian trademarks regime every application must contain a "use" grounded filing basis. Applications can be based on use of the trademark in Canada, proposed use of the trademark in Canada, the trademark having been used abroad and made known in Canada or use and application/registration of the trademark abroad. Accordingly, there has been, and continues to be a massive surge in applications over the last year as businesses bolt to secure protection for their marks (and their desired marks).
3. Filing of early renewal possible
Renewal fees once the new law comes into effect will be calculated based on the number of classes, namely C$400 for the first class, and C$125 for each additional class, instead of the current fee of C$350 regardless of the number of classes.
However, registrations due for renewal after June 17, 2019, can be renewed early (for a 10-year term) and the current government renewal fee will be payable and no "per class" fees will be incurred.
Therefore, there may be significant cost savings associated with classifying and renewing prior to June 17, 2019 in case of multi class applications in Canada.
KEY HIGHLIGHTS OF THE NEW TRADEMARKS ACT ARE AS UNDER:
1. Expanded Definition of Trademark
The definition of a trademark will be greatly expanded and changed to the term "sign" and will include virtually anything that functions as an indicator of source, including non-traditional trademarks such as colors, scents, tastes, textures, moving images, and holograms.
2. The Nice Classification
Applicants will now be required to classify the goods and services listed in their application in accordance with the Nice Classification i.e. the international standard for classifying goods and services.
3. "Use" of a Trademark will no longer be required for registration
The new trademark legislation will eliminate the need to include filing grounds in an application. With simplified trademark applications, there will no longer be the need to identify the date of first use of the mark.
The obligation to file a Declaration of Use will no longer be required and the same will apply to all new applications as well as all the pending applications.
As of June 17, 2019, for all allowed applications where the only substantive requirement is the filing of a declaration of use, applicants will merely have to pay the official fee i.e. CA$200 registration fee.
4. Adoption to Madrid Protocol
Canada will adopt the Madrid Protocol i.e. securing international registration of trademarks. The local business owners are the ones who are bound to benefit the most by seeking protection of their trademark in territories of nearly 100 member countries through a single application. In addition, the foreign applicants would also be able to obtain protection of their trademark by designating Canada in their Madrid Application alongwith other member countries.
5. Shorter Renewal Period and Fees
The renewal period under the new trademark law has been reduced from 15 years to 10 years. Trademark renewals, as a result, will need to be filed every 10 years to ensure that protection is ongoing.
6. Division of Application
It will be possible to divide applications, which may be beneficial during prosecution or opposition proceedings in case some of the goods or services are objected or opposed.
7. Priority Claim
Under the new law, it will be permissible to claim a priority filing date from an application filed within 6 months of a Canadian filing as long as that application was filed in the applicant's "country of origin".
8. Associated Marks
All associations will be removed from existing registrations and no further associations will be permitted.
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.