The Canadian Trademarks Act – Long-Awaited Changes Become Reality

Trademarks Act in Canada

It’s a new day!  However, has anything really changed for the small business owner now that Canada’s new Trademarks Act has finally come into force as of June 17, 2019 (a gargantuan undertaking that was nearly 5 years in its realization)?  Let’s highlight some facts.

Definitions

There is a greatly expanded definition of what constitutes a “trademark”.  Trademarks are now a sign or combination of signs which includes words, images, holograms, three-dimensional shapes, moving images, modes of packaging goods, sounds, smells, tastes, textures and positioning of a sign.

Basis

Identifying grounds has been eliminated as a filing requirement and use in commerce is no longer a prerequisite to getting a trademark registered.  In terms of impact on trademark owners, monitoring of the marketplace, policing trademarks and paying attention to the state of the trademark register for pirating activities will be more important than ever before.  Adversarial matters may become more complicated.  Determination of seniority of rights will involve enhanced searches and investigation.

Classifications

In terms of identifying goods and/or services associated with a trademark, no more combining everything into one lengthy narration.  Now goods and services have to be categorized into one or more of 45 international classes, known as the Nice Classification System.  Applications will not proceed to examination unless classification has been undertaken.  Prior to advertisement, existing applications on the register will need to undergo the classification process.

Fees

No more “one size fits all” charge.  Filing fees have increased based on the numbers of classes covered by an application.  The government fee is $330 for the first class in new applications (each additional class at $100).  Likewise, renewal fees see an increase based on the classification system.  The renewal of a trademark covering one class rises to $400 (additional classes at $125 each).  A piece of good news, since there is no longer a requirement to identify a basis for filing a new application, Declarations of Use have been eliminated as well as payment of the $200 registration fee.

Terms

The duration of a Canadian trademark registration decreases from 15 years to 10 years effective for all trademarks that register going forward or were due for renewal on or after June 17, 2019.

Impact on existing registrations

If not completed at some point in the past, existing trademarks will require that goods and services be classified.  Generally speaking, this will have to occur at renewal, although if notices are issued by the Registrar, earlier action will be required.  The timing of renewals has been narrowed to a window commencing 6 months prior to the actual renewal deadline ending in the grace period of 6 months following the deadline.

International trademark filings (Madrid Protocol)

For those businesses hoping to expand their brand internationally, one of the most exciting developments is the ability to file for international trademark protection of Canadian applications or registrations in up to 120 countries through a centralized office, the World Intellectual Property Organization (WIPO).

Anything else?

The above is a sampling of some of the legislative changes that are now in effect.    Others not discussed include divisional applications, examination for distinctiveness, and notification of third party rights during examination. Common law (unregistered) trademarks that acquire distinctiveness through use in association with goods and services to develop goodwill and reputation over time will continue to enjoy limited territorial rights.

If you have any questions relating to this article or wish to discuss your particular concerns, you may reach the author atistratton@kmblaw.com or (905) 276-9111