Canada: Substantial Trade Mark Amendments
The Canadian trade mark system will undergo a very significant transformation in the near future.
Bill C-31, which has now received Royal Assent, includes various amendments to the Canadian Trade-Marks Act that will considerably modify the practice in that jurisdiction and will bring Canada closer to gaining access to the international trade mark registration structure.
Some of the most relevant changes proposed are as follows:
- Adoption of the Nice Classification of Goods and Services: Presently, in Canada, goods and services are not divided in classes as set out in the Nice Classification. Applicants need only pay a single fee and enunciate the products/services intended to be covered by the application. The Nice Classification will be necessary with the new system’s trade mark applications. Further, if Canada follows the practice of most Nice countries, there will likely be a fee per class payable, potentially increasing the trade mark application and registration costs.
- Declaration of use will no longer be required: Canada’s trade mark system is currently use-based. This means that for an applicant to be able to register a trade mark, such mark must have been used in Canada or it must have been both registered and used in an overseas country. Bill C-31 states that applicants will no longer be required to lodge a declaration of use when the application is filed.
- Term of Protection will change: Under the new system, trade mark registrations must be renewed every 10 years rather than the current 15 years.
All of the abovementioned modifications to the Act would bring Canada closer to international trade mark practice and closer to it being compliant with the Madrid Protocol, the Nice Agreement and the Singapore Treaty.
We are reserving our opinion in relation to the benefits or disadvantages of these amendments. However, if Canada does end up joining the Madrid Protocol, Australian trade mark filers will more easily be able to protect their marks in that jurisdiction– and that is good news.