The Canadian Trademarks Act – Long-Awaited Changes Become Reality

CIPO & Updates to Trademark Laws

Fans are woefully aware that the Blue Jays have flown the coop for this year’s post-season, but trademark fever is just beginning to heat up.

The year 2019 is shaping up to be a momentous one for Canadian trademark practice and procedure in the Canadian Intellectual Property Office (“CIPO”).

A little history to start things off:  Back in the Stephen Harper era when the Economic Action Plan Bill C-31 received Royal Assent on June 19, 2014, one of its many aims was to modernize trademarks.  The new Trademarks Act (the “Act”) had been set to come into force once the Trademark Regulations were finalized (now expected to occur in the first quarter on 2019).  The exciting thing about all this is that Canada is stepping onto the world stage, by becoming party to the Singapore Treaty, the Nice Agreement (Classification System) and the Madrid Protocol (International Trademark filing system).  More information on the background to all these developments may be found by consulting CIPO’s online resources at ic.gc.ca.

There will be a number of significant changes to digest for both new and existing trademark owners, a sampling of which is described below:

World-wide protection

One of the most noteworthy developments concerns Canada’s adoption of the Madrid Protocol (for international applications).  In the past, a Canadian-based applicant had to resort to obtaining trademark protection outside of Canada by filing its application with separate national or regional offices.  That will soon change.  For one fee a trademark owner may file one application with the Canadian Intellectual Property Office based on its Canadian application or registration to obtain protection internationally in the countries selected (currently 102 members covering 117 countries).  Naturally this is not a one size fits all option as there are benefits and disadvantages with this type of filing.  For those entities interested in trademark protection in Canada or the U.S. alone, national filings are still a logical choice.

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There will no doubt be some growing pains once all of the changes have been put into practice. For a more in-depth discussion on any trademark concerns you may have, including a portfolio review, please contact our Branding & Franchising Group. Why not become an “early bird” by stepping up to the plate and making it one of your New Year’s Resolutions to discover how trademark protection adds value to your overall game plan.