On June 19, 2017, the Canadian Intellectual Property Office (CIPO) released its draft Regulations under Canada’s new Trademarks Act, which received Royal Assent in 2014, but is not yet in force. A link to the draft Trademark Regulations is available here. The draft Regulations are open to public comment until July 21, 2017. This is the next step leading up to the amended Trademarks Act being proclaimed in force, which is expected to occur in early 2019. Links to our previous reports regarding the impact of the changes to the Trademarks Act in June 2014 and October 2015 are available here and here.
The draft Trademark Regulations define detailed processes, procedures and time frames for the filing and prosecution of Canadian trademark applications, as well as for opposition and section 45 proceedings. The amended Trademarks Act and Regulations will give effect to Canada’s agreement to harmonize its trademark process with the standard procedures in the Singapore Treaty and the Nice Agreement. They will also allow for implementation of the Madrid Protocol. These changes will more closely align Canada’s trademark laws with those of its major international trading partners, including the European Union and the United States, and will make it easier for: (i) Canadian businesses to protect their trademarks abroad; and (ii) international businesses to protect their trademarks in Canada.
Key changes of note in the draft Trademark Regulations include the following:
- Filing and Prosecution Process and Requirements
Applications will not have to include dates of first use, and the filing of a declaration of use will not be required for a mark to proceed to registration or for renewal of a registration.
New applications will have to comply with the Nice classification system, which classifies all goods and services included in an application. Currently, this can be done voluntarily. Existing registrations will have to be amended to include classified goods and services descriptions that comply with the Nice Agreement within six (6) months after receipt of a CIPO notice and as part of the renewal process.
Third party correspondence relating to the registrability of a mark will be permitted during the prosecution of an application. This will enable third parties to correspond directly with the Trademarks Examiner for the purpose of raising a registrability issue, similar to the Letter of Protest procedure in the USPTO.
It will be possible to divide and merge trademark applications and registrations (for example, in order to push approved goods and services into publication phase, while maintaining disputed goods and services in active prosecution), and the procedures to do so are set out in the Regulations.
- Registration Term and Renewals
The new term of registration will be ten (10) years for registrations issued after the coming-into-force date of the amended Trademarks Act, and renewal requests will only be accepted within the six (6) months prior to the renewal deadline or the six (6) months after the renewal deadline. The term for registrations in existence before the coming-into-force date will remain at fifteen (15) years and will not be converted to a ten (10) year term until the next renewal deadline.
The trademark application filing fee will be $330 for the first class, plus $100 for each additional class of goods / services. This is an increase from the current fee of $250 for all goods and services, regardless of the number of classes.
The $200 registration fee will be eliminated.
The renewal fee will be $400 for the first class, plus $125 for each additional class of goods / services. This is an increase from the current fee of $350 for all goods and services, regardless of the number of classes.
- Opposition and Cancellation Proceedings
The party conducting the cross-examination in an opposition proceeding will be responsible for the service and filing of the transcript, and the party whose affiant has been cross-examined will be responsible for the service and filing of the responses to undertakings given during the cross-examination.
The filing of written submissions will be in sequence rather than simultaneous. In an opposition proceeding, the opponent’s submissions will be filed first, followed by the applicant’s submissions. In a section 45 proceeding, the requesting party’s submissions will be filed first, followed by the registrant’s submissions.
It will be possible for parties to file copies of affidavits and statutory declarations with CIPO rather than originals, provided that the original be retained for one (1) year following the appeal deadline in any proceeding. It will be permissible to file evidence electronically.
- International Applications
The amended regulations allow for Canadians to secure international registration of a trademark through a single application. Foreign trademark applicants will now be able to include Canada in their international applications filed pursuant to the Madrid Protocol.
Questions and comments regarding the draft Trademark Regulations may be sent to CIPO via email at email@example.com, indicating “Trademark Regulations” in the subject line. CIPO has advised that it will only consider submissions that: (i) are related to the current consultations and the proposed amendments; (ii) pose a question, issue or complaint based on a reasonable argument and/or facts; or (iii) provide comments on the proposed amendments or the consultative process. Following the close of the consultation period on July 21, 2017, CIPO will prepare and issue a consultation report. All comments received by CIPO will treated as public information.