Canada is about to witness a shift in its trademark regulation system as its amended Trademarks Act will be coming into force from June 17th, 2019. Earlier, TM registrations were valid for a period of 15 years. The amended Act has shortened the registration term to 10 years. The same change in term is also made with respect to renewals.

The definition of trademarks has been broadened to client even non-traditional marks, such as scent, taste and texture, three-dimensional and moving images, and even holograms as trademarks.

One of the most important changes that the Act introduces is that 'proof of use' is no longer a mandatory requirement. However, registrations will still be subject to cancellation for non-use. While the current law requires applicants to declare actual use of the mark in Canada, the new law does not have this requirement. There is a possibility that this amendment may encourage trademark squatters from blocking trademarks. Squatters are persons/ entities obtaining trademark protection for globally famous marks in jurisdictions where the mark is not in use. So, when the genuine users of these marks decide to enter the jurisdiction, these squatters, who are already proprietors of these marks sell them at unreasonable amounts to the actual users. With a view of adhering to the international practices, Canada will now be implementing the WIPO-administered Madrid Protocol. Also, it will be adopting the Nice Classification for classification of goods and services while applying for trademark registration.

Compiled by: Adv. Sachi Kapoor | Concept & Edited by: Dr. Mohan Dewan

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