After five years of anticipation, sweeping changes to Canada’s trademark law will finally come into force on June 17, 2019. The changes, which are substantial, have been canvassed in previous IP Updates. The following briefly summarizes some of the most important changes and reminds trademark owners and trademark practitioners of the implications.
1. Madrid Applications Available
Canadian applicants will be able to file applications in over 80 countries around the world through a single international application. Access to the Madrid international filing system will enable Canadian applicants to manage their international trademark portfolios more efficiently.
Similarly, applicants from Madrid Protocol countries will be able to designate Canada in their international applications as of June 17th and will be able to subsequently designate Canada in existing Madrid registrations.
The Canadian Intellectual Property Office (CIPO) has announced that incoming protocol applications will be charged the same fees as national applications.
2. Increases in Filing Fees and Renewal Fees
Presently, CIPO charges a filing fee of $250 CAD for an application covering any number of classes of goods and services. The application can proceed to registration upon payment of the $200 registration fee.
As of June 17th, every new application will be charged a filing fee of $330 CAD for the first class of goods or services, with a further $100 CAD charged for each additional class of goods or services. The registration fee is eliminated for those applications.
It is important to note that, unlike in other jurisdictions such as the United States, the ultimate filing fee to be charged is based on the number of classes which appear in the application as of the filing date, whether or not the applicant chooses to delete classes after filing. Applicants are therefore encouraged to carefully consider the scope of the goods and services prior to filing.
The renewal fee will increase from $350 CAD today, regardless of the number of classes, to $400 CAD for the first class of goods or services with a further $125 CAD charged for each additional class of goods and services.
3. Declarations of Use No Longer Required
Declarations of Use will no longer be required to secure a registration as of June 17th. This change applies not only to applications filed after this date, but also any applications pending as of this date.
This means that all applications filed before June 17th can proceed to registration once the opposition period has expired, simply upon payment of the registration fee, without the need to file a declaration of use.
4. Use Information No Longer Required When Filing Applications
Applications filed on or after June 17th will not need to indicate whether the applicant has previously used the trademark in Canada, or whether the applicant has used and registered the trademark abroad.
5. Nice Classification Becomes Mandatory
Since 2015, CIPO has accepted applications filed with Nice classifications. However, such classification has been on a voluntary basis.
As of June 17th, all new applications must be filed with Nice classes and all pending applications not yet advertised for opposition purposes must be classified. For unclassified registrations, CIPO will request classification upon renewal.
The requirement for Nice Classification brings Canada more in line with the international norm. However, this requirement does not mean that CIPO will become any more lenient in its review of goods and services descriptions. All goods and services must still be sufficiently specified under Canada’s stringent standards.
6. Registration and Renewal Terms Shortened
New registration and renewal terms will be 10 years (compared to the current term of 15 years). More specifically, any registration issued on or after June 17th will have a term of 10 years. Any registration having a deadline to renew on or after June 17th will have a renewal term of 10 years.
7. More Non-Traditional Trademarks Registrable
The amended Trademarks Act allows for the filing of virtually any type of non-traditional trademarks, many of which were not previously permitted. This includes scent marks, taste marks, and marks for colour per se. In almost all cases, applications for non-traditional marks will require evidence establishing that the trademark was distinctive in Canada at the filing date of the application.
8. Divisional Applications Available
As of June 17th, it will be possible to divide applications. An applicant may choose to divide an application in order to overcome objections raised during prosecution or in view of an opposition, allowing one portion of the application to proceed to registration and focusing the issues on the remaining portion.
9. Notification of Third Party Rights
CIPO will introduce a mechanism for third parties to bring to CIPO’s attention information which may have an impact on the registrability of a pending trademark application. This mechanism is similar to “letters of protest” which are available in some jurisdictions.
The procedure (which does not create an inter partes proceeding) will be limited to three grounds, namely:
- confusion with a registered trademark;
- confusion with a prior-filed application; and
- where a registered trademark(s) is used to describe goods or services in the application.
Written arguments or evidence of prior use will not be accepted or considered. CIPO has indicated that if this mechanism is abused, it reserves the right to eliminate the practice.
10. Targeted Section 45 (Non-Use Cancellation) Proceedings
Presently, a Section 45 (non-use cancellation) notice can only be issued against a registration as a whole, even if the requesting party seeks to challenge only a portion of the goods or services.
As of June 17th, it will be possible to request a Section 45 notice be issued against a subset of the goods and services listed in the registration. This change is expected to result in quicker and more efficient resolution of such proceedings.
A further change is that Section 45 proceedings may be initiated by CIPO itself, instead of the current practice where such proceedings are only initiated at the request of a third party. It remains to be seen when and how CIPO intends to exercise this power.
Getting ready for the changes
In the final days before the changes come into force, trademark owners should consider taking immediate steps which could result in substantial cost savings, such as filing multi-class applications and renewing multi-class registrations now to take advantage of the lower fees. Trademark owners should also plan for the steps they will take after June 17th to streamline their portfolio management, such as using the Madrid international filing system and filing applications for non-traditional trademarks.