Amendments to the Canadian Trademarks Act – the highlights.
In 2014, the Canadian Government proposed amendments to the Trademark act. The finalized regulations were published last year ,on November 14 and with them, an announcement of the coming into force date: June 17, 2019.
This reform will have significant impact on the Canadian trademarks system.
Here are the most notable changes:
- Alignment with international trademark law and standards:
Canada will adopt, amongst others ,the standard procedures of the Madrid Protocol concerning the International Registration of Trademarks and the Nice Agreement concerning the Classification of Goods and Services. On one hand, this will make it easier for Canadian companies to protect their trademarks internationally by filing a single application and paying only one set of fees to apply for protection in over 100 countries. On the other hand, it will also make it easier for foreign companies to seek protection for their businesses and trademarks in Canada.
- Changes to trademark eligibility and to examination procedure – distinctiveness:
The new amendments broaden the scope of what is considered eligible for trademark registration. Until the coming into force date, only traditional trademarks such as word marks and design marks can be protected. After June 17, 2019 non-traditional signs such as colours, holograms, animated images and scents will also be eligible for legal protection.
Under the current legislation, applications are not subject to examination by CIPO ( Canadian Intellectual Property Office) for distinctiveness. Under the amended legislation, this will change and new and pending applications will be examined for distinctiveness.
- Changes to the trademark registration and renewal process:
The adherence to the Nice Agreement implies that, in practice, all goods and services listed in trademark applications and registrations (at the time of renewal at the latest) will need to be classified in accordance with the Nice Classification system. The (CIPO) will issue notices , as from June 17, 2019, requesting classification of unclassed registrations which will carry a 6 month deadline compliance.
- Changes to the term of trademark protection:
Trademarks are currently protected in Canada for a 15-year term from the date of registration. Once the new legislation enters into force the term will be shortened to 10 years .Trademark owners will only be permitted to pay renewal fees within 6 months in advance of the renewal date, while now this can be done at any moment.
- Changes to the use requirements for registration:
Under the current Canadian trademarks regime every application must contain a “use” grounded filing base. The revised trademark legislation eliminates the need to include filing grounds in an application and , if the basis was proposed use in Canada, to file a declaration of use . So, as from June 17, 2019 anyone can file an application in Canada.
- Changes to government application fees:
Currently, CIPO charges a flat fee for filing and a flat fee for registration, regardless of the number of goods and services applied for. After the coming into force of the new regulations a fee per class system will be adopted. The same will apply to renewals.
There are many other changes, most of them seeking to address existing grievances about trademark practice in Canada and to fill gaps created by the amendments coming into force in June.
Will you and your business be ready for the change? If you would like to discuss this or any other issue, please get in touch with us ( firstname.lastname@example.org or your trusted Kirkpatrick contact).