From mid 2016, amendments to Canadian trade mark laws will make it more difficult for foreign trade mark owners to register to protect their brand.

Registered trade marks are the most important tool that a business can have to protect its brand in Australia and worldwide. They give you the exclusive monopoly to use the brand in connection with your business’ goods and services and give you the right to prevent others from using similar or identical brands for similar or closely related goods and services. Trade marks can be registered in perpetuity provided they remain in use in the countries in which they are registered and if renewal fees are paid every ten years.

Registered trade marks are the most important tool that a business can have to protect its brand in Australia and worldwide. They give you the exclusive monopoly to use the brand in connection with your business’ goods and services and give you the right to prevent others from using similar or identical brands for similar or closely related goods and services. Trade marks can be registered in perpetuity provided they remain in use in the countries in which they are registered and if renewal fees are paid every ten years.

Many businesses use brands without seeking trade mark protection and unregistered marks are much more difficult to enforce than registered marks that are regulated by legislation.  

Upcoming amendments to Canada’s trade mark laws will make it more difficult for foreign trade mark owners to register their trade marks in Canada from mid 2016.  

In summary, if your business is planning to expand into Canada in the next few years, we recommend that you apply for trade mark protection before June 2016. Foreign trade mark applicants can currently rely on evidence of use of their brands outside of Canada to overcome objections raised by trade mark examiners in Canada but after mid 2016, such evidence will no longer be so readily accepted by Canadian examiners.   

Current position in Canada

Under Canada’s current Trade Marks Act, a non-Canadian brand owner that owns a trade mark registration outside of Canada can rely on foreign registrations and business activities outside of Canada to support its trade mark applications in Canada. This is particularly useful where a business has not yet begun to sell its goods and services in Canada but can still rely on foreign evidence to attempt to overcome any objections raised.  

What will the amendments mean for non-Canadians?

The amendments to Canada’s Trade Marks Act will mean that non Canadian applicants may no longer be able to rely on overseas use to support their trade mark applications in Canada and additional effort will be required by non-Canadian brand owners to produce persuasive evidence. The applications may also be prone to restriction to particular provinces or regions in Canada.  

In cases where a trade mark application has been objected on the basis of descriptiveness, applicants will need to produce evidence to establish that the mark has actually become distinctive and not merely that the mark is ‘not without distinctive character’ so the threshold will be higher for foreign applicants who do not have any existing use of the brand in Canada.  

Recommendations

We recommend that you review your brand extension strategy and consider whether Canada is likely to be an important country for your business. If so, file your trade mark applications as soon as possible before mid 2016. We can assist you with trade mark registration in Canada and we recommend that you seek our advice as soon as possible in respect of protecting your brands in Canada.