After years of uncertainty, a date has been set for the implementation of Canada's new trademark law which will come into force on 17 June 2019. This was announced on 14 November 2018 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).

Significant changes

The Canadian trademark law will undergo significant changes. Some of the main changes are highlighted below:

  • Trademark applications will be simplified, as they 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 applications, it also opens the door to trolls and squatters. Therefore, contentious proceedings such as oppositions, litigation and non-use cancellation proceedings are 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 and pending applications. As of 17 June 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 C$200 registration fee.
  • The trademark definition will be expanded to cover anything that functions as an indicator of source. As a result, protection will be available for non-traditional marks including, among others, colour per se, holograms, moving images, sounds, scents, tastes and textures.
  • It will 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 Nice Classification of goods and services will be adopted.
  • Consistent with the rest of the world, fees per class will be introduced, including:
    • a trademark application filing fee of 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
    • a registration renewal fee of 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.

Recommendations to consider

Prior to the new law's implementation, it will be important to consider the following:

  • File multi-class applications before 17 June 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 their fees.
  • Renew registrations before 17 June 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.
  • Expand 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 have not been a problem in Canada because it has not been possible to obtain a trademark registration in Canada without use. However, in anticipation of the change in law, the trolls have already arrived. 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 hundreds, if not thousands, of additional new applications were recently filed by trolls listing fewer than 45 classes. To avoid falling victim to trolls, it is important for applications to be filed promptly, especially in cases where a trademark has a reputation abroad but not in Canada. In those cases, legitimate trademark owners that do not register their brands in Canada risk having a troll register it first.

For further information on this topic please contact Philip Lapin at Smart & Biggar/Fetherstonhaugh by telephone (+1 613 232 2486) or email (plapin@smart-biggar.ca). The Smart & Biggar/Fetherstonhaugh website can be accessed at www.smart-biggar.ca.

This article was first published by the International Law Office, a premium online legal update service for major companies and law firms worldwide. Register for a free subscription.