Long Time Coming: New Trademarks Act Coming Into Force June 2019

| Denise Ramsden

Nearly five years after receiving royal assent, amendments to the Trademarks Act will come into force on June 17, 2019. The federal government made the announcement through publishing the new Trademark Regulations in the Canada Gazette II on November 14.1

What You Need To Know

  • The new Trademarks Act and Trademarks Regulations will bring major changes to the Canadian trademark regime.2
  • While there are many changes to the Trademarks Act, some of the notable changes include eliminating the use requirement at the time of application; implementing the Nice Classification; an expanded definition of “trademark;” eliminating associated marks; reducing the term of registration; and availability of divisional applications.
  • The changes will align Canada’s trademarks regime with international standards and obligations. By virtue of these amendments, Canada will become a member of the Madrid Protocol, and the Canadian framework will be brought into compliance with the Nice Agreement and the Singapore Treaty.
  • In light of these changes, trademark owners should consider their portfolios now.

Details of Notable Changes

The Use Requirement at the Time of Application will be Eliminated

A date of use in Canada will no longer be required in a trademark application, and a declaration of use will be removed as a prerequisite to registration. This change will apply to both new and pending applications as of June 17, 2019. Prior use will still be a key factor in establishing entitlement. The absence of a use requirement at the time of filing may lead to an increase in paper registrations and trademark squatting.

Nice Classification will be Implemented

Goods and services will now be classified according to the Nice Classification—the international classification system for goods and services—which will come with a per-class fee structure.

Definition of “Trademark” Expanded

Non-traditional marks, like holograms, sounds, scents and tastes will be explicitly registrable and such applications will be strictly examined for distinctiveness.

Associated Marks Eliminated

Marks will no longer be classified as “associated.” This will mean such marks will no longer need to be transferred together and documentation regarding the transfers of such marks will not be required by CIPO. This change is welcome for transferring ownership of large portfolios of trademarks, although trademark owners must still be cognizant of preserving the distinctiveness of their trademark.

Term of Registration Reduced

The term will be reduced from 15 years to 10 years. The 15-year term will be grandfathered for all registrations effective prior to June 17, 2019, which represents a cost-saving measure for all marks registered prior to that date.

Availability of Divisional Applications

Applicants will be able to divide portions of their application after filing. This may permit uncontested aspects of an application to be hived off and proceed to registration more efficiently.

Recommendations

  • File new trademarks now, especially applications covering multiple classes of goods and services, in order to avoid fee-per-class registration fees.
  • File new or expanded trademarks now for important trademarks across a very broad range of goods and services, as a deterrent to trademark squatters.
  • Where possible, renew registrations now in order to avoid increased renewal fees.
  • For pending applications covering broad lists of goods and services, owners should consider avoiding the filing of partial declarations of use, since registration for a full list of allowed goods/services will be permitted without such a declaration.

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1 See the Trademarks Regulations, SOR/2018-227.

2 We have previously written on this subject, see “Significant Changes to Canada’s Trademarks Law on the Horizon.”

To discuss these issues, please contact the author(s).

This publication is a general discussion of certain legal and related developments and should not be relied upon as legal advice. If you require legal advice, we would be pleased to discuss the issues in this publication with you, in the context of your particular circumstances.

For permission to republish this or any other publication, contact Janelle Weed.

© 2018 by Torys LLP.
All rights reserved.

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