By Order In Council Number 2018-1329 issued by the Canadian Privy Council Office, Canada’s long-awaited trademark regime changes are now set to take effect on June 17, 2019.
The trademark regime changes represent the most significant changes to Canada’s trademark laws (in both substance and procedure) since 1954 and are designed to enable ratification and implementation of international treaties relating to trademarks, particularly the Singapore Treaty, the Madrid Protocol and the Nice Agreement. The amendments are also aimed at modernizing and harmonizing Canadian trademark law and practice with those of numerous other jurisdictions around the world, including substantial alignment with trademark law and practice in the European Union.
Trademark owners should be aware of some key changes that will come into force on June 17, 2019, including:
Filing and Prosecution Process and Requirements
Applications will no longer 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.
New applications will have to comply with the “Nice” classification system which classifies all goods and services included in an application. Existing registrations will have to be amended to include classified goods and services descriptions that comply with the Nice Agreement within six (6) months following receipt of a CIPO notice or and as part of the renewal process.
The definition of “trademark” will be significantly expanded and will result in protection of non-traditional trademarks such as colours, scents, tastes and moving images.
Registration Term and Renewals
The new term of registration will be ten (10) years for registrations issued after June 17, 2019 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 June 17, 2019 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.
Importantly, through the Madrid Protocol, the new trademark regime will enable Canadian applicants to secure trademark registrations around the globe without the need to effect filings in individual countries.
In light of these changes, we recommend that trademark owners:
1. Review trademark portfolios and adopt an aggressive filing strategy in advance of June 17, 2019 to protect any marks that are not yet registered.
This approach will take advantage of the fact that currently there is greater certainty with respect to the availability of marks for use and registration in Canada and there is only one fee regardless of the number of goods and/or services covered by the application.
2. As the changes are expected to result in an influx of Canadian trademark application filings from applicants around the globe, it will be more important than ever to monitor new filings through a trademark watch service subscription in order to identify potentially infringing marks.
3. Renew registrations with renewal deadlines prior to June 17, 2019 now to take advantage of the current 15 year renewal term.
4. Consider strategic use of the Madrid Protocol for future international filings.
Additional significant changes to Canada’s trademark laws have been included in the recently tabled Budget Implementation Act, 2018, No. 2 (Bill C-86). Bill C-86 contains proposed amendments which will affect legislation relating to Intellectual Property, including further amendments to the Trademarks Act (Canada). As it is an omnibus bill affecting many pieces of legislation to implement the 2018 Budget introduced earlier this year, the timing of its passage is likely to be expedited and could coincide with the June 17, 2019 coming into force date. We will report further as Bill C-86 progresses.