Following nearly five years of drafting, public consultations, and revisions, Canada’s new Trademarks Act and Regulations are finally coming into force on June 17, 2019 (CIF date). These changes are intended to bring Canada’s trademark laws in line with international standards and will have a significant impact on the trademarks system as we know it.
For existing applications that are advertised before the CIF date, generally speaking, the “old” Act applies. For existing Applications that were not advertised by the CIF date, the “new” Act applies.
Getting Trademark Protection Now Simpler
Many of these upcoming changes will simplify procedural requirements at the Canadian Trademarks Office, especially at the filing and examination stages.
Perhaps the most significant change in the filing process is the removal of the previous “Use” requirement. Applications now do not need to specify actual or intended use, nor do Declarations of Use need to be filed (i.e. proving use) for an application to be registered.
Applicants also have the option of filing a Madrid Application, which allows the filing of a single trademark application through WIPO. This provides protection through designation of up to 119 countries without the applicant having to file separate national applications in each country of interest and having to pay several different filing fees.
Interestingly, divisional applications are now possible in Canada. Previously, problematic portions of an application often had to be removed from an application in order to proceed. Under the new Act, the problematic portions can now be carved out in a divisional application and dealt with separately.
In addition, if filing requirements are not initially met, they can be remedied and retroactively receive the filing date. As well, registration fees are no longer required to be paid for an application to proceed to registration.
However, these benefits are not entirely costless.
Notably, applicants will now have to classify their goods and services according to the Nice classifications, which will affect the filing fee. Whereas previously, a single filing fee was paid regardless of the number of classes in an application, the filing fee under the new Act is $330 CAD for the first class, and $100 CAD for each additional class.
The registration term has been reduced from 15 years to 10 years, and renewal fees have also increased in a similar manner to $400 CAD for the first class and $125 CAD for each additional class. As such, applicants should no longer necessarily include all potential goods and services in their initial applications.
Simpler Trademark Process - A Double Edged Sword
While applicants “win some” in terms of their own filing and registration process, they may “lose some” in terms of third-party registrations. The elimination of the Use filing basis means ALL applications, including those without any legitimate means or intent to use the trademark (such as trademark trolls), can acquire trademark registrations and crowd the registrar.
Bear in mind that, under the new Act, an owner of a registered trademark cannot obtain relief for infringement or depreciation of goodwill during the first three years after registration unless the mark is in use in Canada during that period or special circumstances exist that excuse absence of use. However, a crowded registrar may still be problematic because it potentially prevents genuine trademark rights seekers from getting their applications through.
To combat this, trademark applicants and rights owners may have to more actively engage in oppositions and section 45 proceedings.
Opposition proceedings take place during the prosecution process of an application. When someone (the opponent) becomes aware of a trademark application they believe should not be granted, they can “object” to its registration. If successful, the opposition prevents the trademark application from registering.
Under the new Act and Rules, an improper date of first use is no longer considered a ground of opposition. However, no use or intention to use as of filing date is now a ground of opposition. As well, a new “bad faith” ground of opposition has also been introduced which may invalidate the application.
As such, a watching search is recommended so the rights holder can be notified of potentially problematic trademark applications coming down the line, and have an opportunity to oppose before the application registers.
Section 45 proceedings are a means for expunging a registration from the trademark registrar if the mark has not been used in Canada in the last three years, and there are no special circumstances justifying the lack of use. If the Section 45 proceeding is successful, the expunged trademark is removed from the registrar.
Under the new Act and Rules, the Trademark Office now has greater powers to initiate Section 45 proceedings. As well, partial Section 45 challenges are now possible for certain goods/services if only part of the application is deemed problematic.
Overall, these changes will better harmonize Canada’s trademark legislation with its trading partners. Although these changes should streamline the registration process, extra care must now be paid to monitor the trademarking activities of third-parties.
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.