Introduction
Trademark Regulations
Industrial Design Regulations
Consultation process
Canada's trademark law is being significantly overhauled. The most recent forecast from the Canadian Intellectual Property Office (CIPO) suggests that the new law will come into force by early 2019. The Industrial Design Law is similarly undergoing modernisation, with the new law also expected to come into force by early 2019.
Canadian laws are typically enacted through two types of legislation:
- acts, which detail the substance of the law; and
- regulations, which provide details relating to procedure, timeframes and so on.
The new Trademarks Act and the new Industrial Design Act have been finalised. However, the Trademark Regulations and the Industrial Design Regulations have not yet been finalised. On June 19 2017 CIPO released the first draft of the new regulations. Among the most significant changes enacted by the new Trademarks Act are those which will enable Canada to adhere to and become a member of the Madrid Protocol and the Nice Agreement. The Madrid Protocol simplifies the procedure for filing corresponding trademark applications in foreign countries once a trademark applicant has a home country trademark application or registration. The Nice Classification provides a (mostly) standardised means to classify goods and services. Similarly, the amendments to the Industrial Design Act are to enable the implementation of the Hague Agreement, which provides a mechanism for registering an industrial design in several countries by means of a single application, filed in one language, with one set of fees. The draft regulations provide considerable detail outlining how Canada will adhere to these international agreements.
Given the extent of the changes set out in the draft regulations, and given that many of these relate to technical issues and minutiae, not all of the changes are outlined in this update. However, a few highlights are worth mentioning. The draft regulations:
- permit third-party correspondence during prosecution (currently prohibited) arguing that the mark should not be registered;
- eliminate the C$200 registration fee;
- specify fees per class, unlike current law in Canada which does not. For example:
- trademark application filing fees will be C$330 for the first class plus C$100 for each additional class, instead of the current C$250 filing fee regardless of the number of classes; and
- the registration renewal fee will be C$400 for the first class plus C$125 for each additional class, instead of the current fee of C$350 regardless of the number of classes;
- codify the ability to correct the name of an applicant in a trademark application;
- describe the procedure for dividing and merging applications and registrations; and
- set out changes for trademark opposition practice, including:
- the timing relating to cross-examinations;
- the filing of written arguments in sequence (instead of in parallel under the current system); and
- the permitted extensions of time, which will be slightly different for applications filed through the Madrid Protocol.
Although perhaps less extensive than the amendments to the Trademark Regulations, the new Industrial Design Regulations provide some significant changes of note. For example, the draft regulations:
- provide a formal acknowledgement of third-party correspondence during prosecution which protests that the design should not be registered;
- relax the illustration requirements by allowing any combination of photographs, graphic reproductions or other specified visual reproductions;
- further relax the illustration requirements by requiring only a single illustration that shows the design in isolation, allowing multiple illustrations to contain environment, where presently only one illustration containing environment is permitted;
- make optional the inclusion of a description of the design, where presently it is mandatory;
- allow the filing of a divisional application for any design disclosed in a parent application, but further limit the timeframe for filing a divisional application;
- provide for publication of the design on the earlier of registration of the design or 30 months from the earliest priority date, where publication presently takes place only upon registration; and
- set out rules of general application, as well as rules applicable only to the processing of applications filed under the Hague Agreement.
CIPO is accepting comments concerning the draft Industrial Design Regulations until July 14 2017 and to the draft Trademark Regulations until July 21 2017. Comments may be submitted to [email protected], indicating in the subject line the regulations to which the submission applies.
After reviewing the comments, CIPO will consider revisions. Before the regulations can be finalised, they must proceed through a formal publication process in the Canada Gazette. CIPO plans to initiate the formal publication process in Autumn 2017. However, as noted above, the new Trademarks Act and the new Industrial Design Act, and their respective regulations are not expected to come into force before early 2019.
For further information on this topic please contact Philip Lapin or Christine N Genge at Smart & Biggar/Fetherstonhaugh by telephone (+1 613 232 2486), fax (+1 613 232 8440) or email ([email protected] or [email protected]). The Smart & Biggar/Fetherstonhaugh website can be accessed at www.smart-biggar.ca.