Change on the Horizon: Significant Amendments to Canada’s Trademark Laws Take Effect on June 17, 2019: What Charities and Not-for-Profits Can Do Now to Prepare

December 13, 2018 | Catherine M. Dennis Brooks, David Schnurr

First tabled in 2014, Canada’s trademark regime changes are finally 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, including charities and not-for-profits, should be aware of some key changes that will come into force on June 17, 2019 in the following areas.

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 months following receipt of a CIPO notice 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 years for registrations issued after June 17, 2019 and renewal requests will only be accepted within the six months prior to the renewal deadline or the six months after the renewal deadline.  The term for registrations in existence before June 17, 2019 will remain at 15 years and will not be converted to a ten year term until the next renewal deadline.

Fees

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.  However, 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.

International Applications

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.

Recommendations

Trademark owners, including charities and not-for-profits, are advised to familiarize themselves with the new trademark laws and adopt proactive strategies in order to: (i) ensure that their key trademarks are protected, (ii) prevent competitors from harming the value and goodwill associated with these marks; and (iii) effect strategic filings and renewals now in order to take advantage of beneficial rules and cost-savings mechanisms provided for under the existing trademark laws.

In particular, we recommend that trademark owners, including charities and not-for-profits:

  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, including effecting multi-class filings.

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.

Many trademarks used by charities and not-for-profits fall under multiple classes of goods and/or services.  For example, “charitable fundraising” and associated services generally falls under Nice Class 36, whereas community support services provided by a charity or not-for-profit may fall under a number of different classes (e.g. one or a combination of Classes 35, 37, 38, 39, 41, 42, 43, 44, 45, etc.).  In addition, newsletters and other printed materials issued by a charity or not-for-profit fall under Class 16, whereas other goods (such as clothing products, tote bags, and other promotional goods) sold and distributed by a charity or not-for-profit fall under still additional Classes.

In addition, trademark owners should consider making defensive trademark application filings in order to guard against trademark trolls.

We specifically recommend that charities and not-for-profits review their trademark portfolios and consider filing new applications to register any unregistered names, slogans and/or logos which they are using, or intend to use in the future, in Canada or abroad.

  1. 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. We expect an influx of new Canadian trademark filings by international charities and not-for-profits who may not have any tangible activity in the Canadian marketplace.  A number of trademark disputes have already arisen between charities and not-for-profits who have adopted similar or identical names, slogans and/or logos.  When the new legislation takes effect, we expect to see a marked increase in trademark disputes owing to an anticipated uptick in new trademark filings.
  2. Renew registrations with renewal deadlines prior to June 17, 2019 now to take advantage of the current 15 year renewal term. Early renewal of existing multi-class registrations will also avoid new class fees applicable to trademark renewals effected on or after June 17, 2019.
  3. Consider strategic use of the Madrid Protocol for future international filings with a view to expanding brand protection globally. If your charity or not-for-profit operates outside of Canada, you will benefit from use of the Madrid Protocol.

It is important for charities and not-for-profits to turn their minds to these issues now before the changes occur on June 17, 2019.

Disclaimer

This publication is provided as an information service and may include items reported from other sources. We do not warrant its accuracy. This information is not meant as legal opinion or advice.

Miller Thomson LLP uses your contact information to send you information electronically on legal topics, seminars, and firm events that may be of interest to you. If you have any questions about our information practices or obligations under Canada's anti-spam laws, please contact us at privacy@millerthomson.com.

© 2019 Miller Thomson LLP. This publication may be reproduced and distributed in its entirety provided no alterations are made to the form or content. Any other form of reproduction or distribution requires the prior written consent of Miller Thomson LLP which may be requested by contacting newsletters@millerthomson.com.