Not-for-profit organizations and other brand owners can look forward to amendments to the CanadianTrade-marks Act ("Act") and Regulations which will extend opportunities to protect their trademarks in Canada and internationally.

Highlights of Canadian trademark legislation passed in June of this year and expected to come into force sometime in late 2015 or early 2016 include:

  • The definition of "trademark" will expand significantly to include marks which include three-dimensional shapes, holograms, moving images, modes of packaging and marks comprised of colour, scent, taste or texture.
  • Applications filed before the Canadian Intellectual Property Office ("CIPO") will now be based solely on the applicant's intention to use or existing use in Canada.  Applicants claiming use in Canada will no longer have to identify their date of first use.
  • Certification mark applications which protect trademarks for use in association with the standards of the goods or services offered will no longer require use of the mark in Canada prior to filing.
  • Trademark applications can be divided, allowing greater flexibility in responding to delays or challenges.
  • Canadian brand owners will be able to file applications internationally by way of the Madrid Protocol, accessed through CIPO.
  • Applications will utilize the Nice Classification system for goods and services.
  • Registrations will have 10 year renewal terms.
  • Application opposition practice will change significantly, including the addition of new bases of opposition and parties taking responsibility for the timing of cross-examination.

No changes have been made to Section 9 of the Act which provides exclusive protection for the marks of Canadian organizations which qualify as public authorities.   

We expect the Federal Government of Canada to publish draft Trademark Regulations for public consultation within the next few weeks.  Those regulations will further define the treatment of applications and registrations before CIPO.  Once the Government finalizes the regulations it will move toward implementation of the amendments to the Act and the accompanying Regulations.