After five years of anticipation, sweeping changes to Canada's trademark law finally came into force on 17 June 2019.(1) The following article briefly summarises some of the most important changes and reminds trademark owners and trademark practitioners of the implications.
Canadian applicants can now file applications in more than 80 countries around the world through a single international application. Access to the Madrid international filing system enables Canadian applicants to manage their international trademark portfolios more efficiently.
Similarly, applicants from Madrid Protocol countries can now designate Canada in their international applications from 17 June 2019 and 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.
Before the changes came into force, CIPO charged a filing fee of C$250 for applications covering any number of classes of goods and services. The application could proceed to registration on payment of the C$200 registration fee.
Every new application will now be charged a filing fee of C$330 for the first class of goods or services, with a further C$100 charged for each additional class of goods or services. The registration fee is eliminated for those applications.
Notably, 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. Therefore, applicants are encouraged to carefully consider the scope of the goods and services prior to filing.
The renewal fee has increased from C$350, regardless of the number of classes, to C$400 for the first class of goods or services with a further C$125 charged for each additional class of goods and services.
Declarations of use are no longer required to secure a registration. This change applies not only to applications filed after this date, but also any applications pending as of 17 June 2019.
This means that all applications filed before 17 June 2019 can proceed to registration once the opposition period has expired, simply on payment of the registration fee, without the need to file a declaration of use.
Applications filed on or after 17 June 2019 need not indicate whether the applicant has previously used the trademark in Canada or whether the applicant has used and registered the trademark abroad.
Since 2015 CIPO has accepted applications filed with Nice Classifications. However, such classification has been voluntary.
All new applications must now 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 on renewal.
The requirement for Nice Classification brings Canada more in line with the international standard. 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.
New registration and renewal terms are now 10 years (compared to the previous term of 15 years). More specifically, any registration issued on or after 17 June 2019 will have a term of 10 years. Any registration having a deadline to renew on or after 17 June 2019 will have a renewal term of 10 years.
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 now require evidence establishing that the trademark was distinctive in Canada at the application's filing date.
It is now 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.
CIPO has introduced a mechanism for third parties to notify CIPO of information which may affect 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) is limited to three grounds:
- confusion with a registered trademark;
- confusion with a prior-filed application; and
- where a registered trademark 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.
Previously, a Section 45 (non-use cancellation) notice could be issued only against a registration as a whole, even if the requesting party sought to challenge only a portion of the goods or services.
It is now possible to request that 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 previous practice where such proceedings are initiated only at the request of a third party. It remains to be seen when and how CIPO intends to exercise this power.
- "Nice Classification with a trap – Canada introduces class top-up fees with no back door";
- "Act now: follow this to-do list to save money on Canadian trademarks before 17 June 2019";
- "Save money: renew all trademark registrations now";
- "Save money: file your multi-class applications now"; and
- "The date is set – new trademark law will be in force June 2019".
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.