Canada’s New Trademark Regime
By Ahmed Bulbulia, Pallett Valo LLP
On 17 June 2019, a new trademark regime came into force in Canada. Transformational changes to Canada’s trademark laws have been adopted to align Canada with international standards and obligations. This new regime contains a number of fundamental changes that brand owners and their legal advisors should be aware of. Some of the key changes are summarised below:
Canada Adopts the Madrid Protocol
Canada is now a party to the Madrid Protocol. This change enables foreign applicants to use the Madrid Protocol to extend trademark rights to Canada. However, offcial correspondence regarding applications will only be sent to the applicant or to a Canadian trademark agent residing in Canada. Accordingly, to receive offcial correspondence in a timely manner it is advisable to appoint a Canadian trademark agent upon extending trademark rights to Canada under the Madrid Protocol, or soon thereafter.
Adopting Nice Classification for Goods and Services
As of 17 June, goods and services in new trademark applications (and pending applications filed before 17 June but not yet advertised) must be classified in accordance with the Nice Classification system which categorises all goods and services under 45 different international classes. This brings Canada in line with most other industrialised countries.
Increased Filing Fees
Government filing fees on trademark applications increased with the implementation of the Nice Classification, namely CAD 330 for the first class and CAD 100 for each additional class of goods and services. These filing fees are calculated at the time of filing. (Under the old regime there was a flat-rate filing fee of CAD 250 regardless of the number of goods and services.)
Expanded Definition of Trademark
The definition of a trademark is now expanded to include, for the first time, non-traditional marks such as holograms, moving images, scents, tastes, colour alone, and texture. Such non-traditional marks must be distinctive at the time of filing in order to be registrable.
Use Requirement is Removed
Previously, an applicant had to rely on use of the applied-for trademark in Canada, or proposed use in Canada, or use outside of Canada when filing a trademark application. As of 17 June, this “use” requirement is removed. Use of the trademark in Canada remains relevant for entitlement and enforcement purposes.
Declaration of Use No Longer Required
Filing a Declaration of Use is no longer required for new applications filed after 17 June, and for those pending applications that have been allowed before this date.
Those applicants who filed an application under the old regime based on “proposed use” in Canada, and who have not yet used the trademark in Canada with all the goods and services listed in their pending application, no longer need to file a Declaration of Use. This means they may obtain a registration without limiting the scope of the goods and services in their application.
Divisional Applications Possible
It is now possible to divide applications in Canada which will be of strategic advantage during the prosecution and oppositions.
Letters of Protest
Brand owners may file letters of protest against a pending application in order to raise arguments against registration. For the first time, brand owners can raise objections with the Trademarks Offce against applications for conflicting marks early in the examination stage before advertisement.
Registration and Renewal Changes:
- Term now ten years: The term of registration is now ten years (reduced from 15 years under the old regime).
- Timing for renewal: A request to renew a trademark application can now only be filed within six months before, or six months after, expiry of the registration.
- Increased Renewal Fees: The government fee to renew a registration increased to CAD 400 for the first international class of goods or services and CAD 125 for each additional international class. Previously the renewal fee was a flat rate of CAD 350 (online) regardless of the number of goods or services. The renewal fees are calculated at the time of renewal. When renewing, the goods and services in the registration must be classified by the registrant in accordance with the Nice Classification system.
Ahmed BulbuliaPallett Valo LLP, Mississauga (Greater Toronto), Canada
T: +1 905 273 33 00
Published: GGI Insider, No. 103, September 2019 l Photo: hstiver - stock.adobe.com