Authors: Lorraine Pinsent, Kursty Bansley
On June 17, 2019, Canada will make significant amendments to the Trademarks Act.
The amendments are being made to bring Canada in line with other countries that have been part of these international treaties relating to trademarks. These treaties are the Madrid Protocol, the Nice Agreement, and the Singapore Treaty.
Below we have highlighted the amendments to the Trademarks Act that are considered to be the most significant changes to brand owners and steps that brand owners can take to protect their trademarks.
No use requirement:
Applications will no longer need to specify a date of first use and declarations of use will no longer be requested for proposed use applications. Use will remain the foundation of trademark law in Canada; however, applicants will be able to obtain a registration for a mark without having used the trademark in ordinary commerce.
Trademarks such as holograms, scents, tastes, textures and moving images will be eligible for trademark protection. The Trademarks Office will more than likely require an applicant to provide proof of distinctiveness, which likely means that obtaining a registration will be more difficult compared to the traditional type of trademarks.
All goods and services will have to be classified in accordance with the Nice Agreement. Existing applications and registrations will need to be amended to comply with the Nice Agreement either before registration or renewal or upon specific request of the Trademarks Office.
New Fees Structure:
Trademarks filed prior to June 17, 2019 will still pay the $250 government filing fee regardless of the number of goods and services claimed in the application and the registration fee of $200. Trademarks filed on or after June 17, 2019 will pay based on the number of classes of goods and services under the Nice Classification system. The government fee for the first class of goods will be $330 and each additional class will be $100.
The structure same applies to renewals. If a trademark is renewed prior to June 17, 2019 the fee will remain at $350 and on or after June 17, 2019 the renewal fee will be $400 for the first class and $125 for each additional class.
Trademark that are renewed prior to June 17, 2019 with a renewal date prior to June 17, 2019 will have a term of 15 years. Trademarks that are issued or renewed after June 17, 2019 will have a term of 10 years before renewal of the trademark is due.
Applicants will be able to divide goods and/or services that have been contested in a confusion or descriptiveness objection or when an opposition is filed. Applicants will be able to divide out the uncontested goods and/or services into a divisional application so that application can proceed to registration and merge into one application upon registration.
Applicants will be able to claim priority regardless of which country the trademark application was filed first. Applicants will not be restricted to Canada.
Applicants will be able to file a trademark before the Trademarks Office of a Madrid Protocol country. The application will be sent to the World Intellectual Property Organization (WIPO) for filing in countries of their choosing that belong to the Madrid Protocol after paying the prescribed fees for each jurisdiction. Trademark applications filed under WIPO will still be required to comply with the laws and procedures of these respective Trademarks Offices.
Recommendations to consider before the new law comes into effect
- File multi-class applications before June 17, 2019.
- Renew registrations before June 17, 2019.
- Consider expanding the goods and services in existing registrations.
- Beware of trolls who are filing trademark applications and are listing all 45 classes, presumably expecting to extort payment from legitimate brand owners. It is important to file applications soon so trademarks are not at risk of having a troll register it first.
With these significant amendments to Canada’s trademark laws, we strongly recommend that brand owners contact us to discuss if the marks in their trademark portfolio requires any action prior to June 17, 2019.
For further information please contact Lorraine Pinsent (firstname.lastname@example.org).