Spotlight::IP

The Canadian Trademarks Act underwent substantial changes in mid-2019.  The  streamlined the registration process in Canada and aligned Canadian trademark law with international trademark laws and standards.  It also implemented the international trademark agreement known as Madrid Protocol so that businesses can file in multiple foreign jurisdictions through a single application filed in Canada. 

Five Things Businesses Should Know.

1.         USE REQUIREMENT:  Trademark applications no longer have to identify the date of first use of the trademark in association with the goods and services contained in the application, or have to declare an alternate filing basis such as proposed use or reliance on a foreign registration.  The number of trademark application filings has increased as a result.  If you have an unregistered trademark you are seeking to protect, or have a new trademark for products in development, consider filing trademark applications as soon as possible.  As there is no use requirement, trademark owners should also consider adding goods and services they may offer in future when filing a trademark application.  This will save future filing and prosecution costs.  

2.         EXPANDED DEFINITION OF TRADEMARK:  Generally speaking, trademarks distinguish the goods or services manufactured or sold by a business from those of others.  Under the changes to the Act, in addition to word marks, logos, and sounds, trademarks may now include smells, tastes, textures, holograms, moving images and colours.  The trademark owner must show that the trademark is sufficiently distinctive or different from other marks to identify the trademark owner as the source of the goods or services.  

3.         FILING FEES HAVE INCREASED:  All goods and services are classified in one of 45 classes that make up the international Nice Classification system which has been adopted by Canada.  As with most jurisdictions, Canada now charges a per class filing fees, meaning that the cost of trademark applications which list goods in several classes will rise.  Previously, there was one filing fee per application.  However, that once a trademark has been allowed to proceed to registration, there will no longer be a final registration fee for new applications.

4.         DIVIDING APPLICATIONS:  Trademark applications may now be divided into two or more applications, dividing the goods and services as listed on the initial application.  Therefore, should there be an opposition to registering the trademark in association with some goods and services but not others, the trademark in association with the goods and services not in issue may proceed to registration while the opposition in respect of goods and services in issue proceeds separately.

5.         TERM OF REGISTRATION REDUCED:  The term of a trademark registration has been reduced from 15 years to 10 years.  The reduction in the term does not affect a trademark registration registered prior to the June 2019 until its next renewal date.