Canada’s Intellectual Property Firm

After years of uncertainty, a date has been finally been set for the implementation of Canada’s new trademark law. The new law will come into force on June 17, 2019.

This date was announced today, with the publication of the new Trademark Regulations in the Canada Gazette, Part II (which is part of the process to enact new legislation in Canada).

Canadian trademark law will be undergoing significant changes. Some of the main changes to Canadian law are highlighted below, followed by our recommendations to consider prior to the implementation of the new law.

Some of the more significant changes are the following:

  • Trademark applications will be simplified, since applications will no longer need to identify a date of first use. Details of use and registration of the mark abroad will also no longer be required.

    While this change will significantly simplify the preparation of new applications, it also opens the door to trolls and squatters. Contentious proceedings such as oppositions, litigation and non-use cancellation proceedings are therefore expected to increase significantly. As a result, suitable trademark monitoring should be considered.
  • A Declaration of Use will no longer be required. This will apply to all new applications as well as all 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 $200 CAD registration fee.
  • The definition of a trademark will be greatly expanded to cover anything that functions as an indicator of source.

    As a result, protection will be available for non-traditional marks including colour per se, holograms, moving images, sounds, scents, tastes, textures, among others.
  • It will finally be possible to divide applications in Canada, which will be of strategic assistance during prosecution and oppositions.
  • The term of registration will be 10 years for new registrations.  The 15-year terms for existing registrations will not change.
  • Canada will become a member of the Madrid Protocol.
  • The government registration fee will be eliminated for new applications.
  • The NiceClassification of goods and services will be adopted.
  • Consistent with the rest of the world, fees per class will be introduced.

Examples include:

  • The trademark application filing fee will be:
    • $330 CAD for the first class plus $100 CAD for each additional class instead of the current $250 CAD filing fee regardless of the number of classes.
  • The registration renewal fee will be:
    • $400 CAD for the first class plus $125 CAD for each additional class instead of the current fee of $350 CAD regardless of the number of classes.

Recommendations to consider before implementation of new law

File multi-class applications before June 17, 2019:

  • It will become more expensive to register marks in more than two classes. Trademark owners should consider filing multi-class applications before the new law is in force to reduce fees.

Renew registrations before June 17, 2019:

  • It will be more expensive to renew registrations (regardless of the number of classes) after the new law is in force. Accordingly, to reduce fees, trademark owners should consider renewing their registrations before the new law is in force.

Consider expanding the goods and services in existing registrations:

  • Because it will no longer be necessary to have provided goods and services prior to obtaining a Canadian trademark registration, trademark owners might consider adding goods and services to their existing registrations to expand the scope of their monopoly.

Beware of trolls:

  • Historically, trademark trolls were not a problem in Canada, because it was not possible to obtain a trademark registration in Canada without use. However, the trolls have already arrived in Canada in anticipation of the change in law. For example, over the past two years, more than 400 trademark applications have been filed listing all 45 classes. Close to 100% of these applications were filed by trolls, presumably expecting to extort payment from legitimate trademark owners.

    It is likely that there are hundreds, if not thousands, of additional new applications which were recently filed by trolls listing fewer than 45 classes.

    To avoid falling victim to trolls, it is important to file applications in Canada promptly, especially in cases where a trademark has a reputation abroad but not in Canada. In those cases, legitimate trademark owners who do not register their brands in Canada, risk having a troll register it first.

In anticipation of the upcoming changes to Canada’s trademark laws, Smart & Biggar recently hosted two webinars for brand owners and counsel, both in the U.S. and Europe, to better understand what to expect as the changes come into effect.

Our panel of experts presented several strategies and tips to help brand owners get ahead of fee increases and prepare for future challenges when the new law to come into force. These webinars are now available for replay:

U.S. Brand Owners and Counsel: Strategies and Tips for Navigating Canada’s Trademark Changes

European Brand Owners and Counsel: Strategies and Tips for Navigating Canada’s Trademark Changes

For further information, on the upcoming changes, please contactor a member of our Trademarks group.

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.