The Canadian Trade Mark Office has announced some important changes to its national trade mark system due to come into effect in late 2014/early 2015. These changes are vital to consider both for clients with existing trade marks in Canada and those planning on expansion of their brands into Canada.

Firstly, Canada will be adopting the Nice classification system for the categorisation of goods and services in a trade mark application. This system has been in place throughout most of the trade mark jurisdictions of the world for many years. It is a system of pigeon-holing the revenue streams to be covered in a trade mark application into recognised numbered classes, of which there are 45 with 34 classes relating to goods and the remainder to various services. Canada has for a long time being an anomaly of trade mark practice in terms of listing goods/services where an application could be filed covering any number of goods/services without the need for any classification and thus, no class fees. Canada was therefore a cost effective country to cover for clients with trade marks covering a large number of classes.

Whilst it is good news that Canada will be falling in line with the rest of the world in classifying goods/services by using the Nice system from the perspective of uniformity, the impact on clients wishing to protect their marks in Canada will no doubt be an increase in official government fees depending on the number of classes that are covered in an application.

Secondly, in a major development, Canada is committed to joining the international system for trade mark registration, the Madrid Protocol sometime in 2015. This is a significant addition to an ever increasing list of member countries of this cost-efficient system for trade mark registration. Indeed, Canada's neighbour the US, has been a member for a number of years now and another relatively close country, Mexico signed up to the Madrid Protocol in 2013. The last few years have seen a number of commercially important countries who had previously ignored the Madrid Protocol agree to sign up, including India and New Zealand.

The addition of Canada in 2015 is welcome news to owners of existing Madrid Protocol marks who may wish to add Canada to their registration and to clients who perceive Canada as a potential key future market. This international route of protection will offer a more cost and time efficient route for clients who are seeking to register their marks in a number of member countries. Canada's accession may also lead the way to more South American countries becoming members as it is the most poorly represented continent at present.

Finally, in another key change, the renewal term for Canadian trade marks is set to change from its current 15 year registration period to a ten year term. Again, this falls into line with the majority of other jurisdictions throughout the world and so from a consistency perspective, it is to be welcomed. For existing trade marks that are now registered, once the new 10 year period rules are in place then for future renewals, the mark in question will have to be renewed after 10 years rather than 15 years. Obviously, for newly filed marks in Canada once the provision is in place, the period of protection once registered will be 10 years whereby the mark can be renewed for further 10 year periods indefinitely.

The Canadian IP Office has stated the following on its website regarding these changes:

"By joining international IP treaties, the Government is delivering on its continuing commitment to modernize Canada's intellectual property regime. Canadian businesses will have access to a trademark regime that is aligned with international best practices, that reduces costs and administrative burden, that facilitates their expansion in foreign markets, and that attracts foreign investment to Canada."

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