June 2019

Legal Update: On June 17, Canada will join the Madrid Protocol and offer broader rights to TM holders


Canada’s new trademark reform, initially introduced in June 2014, will go into effect on June 17, 2019. Here are the most significant changes the reform will introduce:

Canada becomes part of the Madrid Protocol
Effective June 17th , Canada will become part of the Madrid Protocol. This means that entities may now obtain a trademark registration in Canada by “ticking the Canadian box” on their international application, as opposed to filing a national application for the country. Small and mid-size businesses and larger companies with substantial portfolios will particularly appreciate this revision, because filing one international trademark through the Madrid protocol is often substantially less expensive than filing multiple national trademark applications in all of the jurisdictions of interest. This provision will also likely increase the number of marks filed in Canada, as the filing process will be considerably simplified for this country.

Broadens the definition and scope of “trademark”
The reforms also broadens the definition and scope of “trademark” to include any signs that may function as an indicator of source or origin. This notably includes protection for non-traditional marks, such as color per se, holograms, moving images, sounds, scents, tastes and textures. This is a good opportunity for brand owners to review their trademark portfolios and consider whether the new provision offers additional protection for some of their non-traditional trademarks in Canada. Trademark holders should, however, note that examiners will have significant latitude to require additional evidence of distinctiveness.

Eliminates “use” as a requirement for registration
Another major revision in the new law is the elimination of a filing basis as well as any use requirement prior to registration. This will apply to all new applications filed as of June 17th , in addition to any application that is pending when the changes go into effect. The removal of the use requirement makes it considerably easier and faster for right holders to obtain a registration. Brand owners should, however, also be aware that this provision will make it easier for a non-practicing entity to file for marks they are not using – and that are potentially owned by a third party – in Canada. Brand owners with successful marks in other jurisdictions but with no right in Canada should take advantage of this law to file promptly for their marks in Canada in order to avoid the risk that a non-practicing entity files first. Please note that while use will no longer be required for registration in Canada, it will remain necessary to show use for enforcement purposes, as well as to maintain rights – e.g. against a non-use cancellation action which may be commenced three years after registration.

Allows division of applications
Canada also introduces a new reform that allows an applicant to request the division of their application. This strategy may be helpful during prosecution and opposition because it offers right holders an opportunity to see the unchallenged portions of their application proceed to registration, while the remainder of the application will continue to undergo further review. Additionally, this will prevent applications from being held up in the application process.

Adopts the Nice classification of goods and services
With this reform, Canada also adopts the Nice classification of goods and services. Previously in Canada, one could file with respect to an unlimited range of goods and services while only paying a single application fee. This practice allowed trademark owners to increase the scope of their protection without paying any additional fees. In an effort to streamline the process, the new reform conforms to the Nice classification codes. However, the requirement for the goods and services to be recited in ordinary commercial terms remains.

Introduces fees per class
The current Canadian trademark law requires a C$250 filing fee, regardless of the number of classes. The new reform requires an application fee of C$330 for the first class and C$100 for each additional class. Similarly, the reform requires a renewal fee of C$400 for the first class and C$125 for each additional class. In an effort to reduce overall costs, trademark owners may want to consider filing for multi-class applications before the reforms go into effect. After the reform, trademark owners should reconsider the scope of their trademarks to protect their rights in the most efficient way.

Assuming this is feasible, trademark owners may want to renew their registrations prior to June 17, 2019 in order to avoid additional class-based renewal fees and the requirement to class the goods and services when renewing, all of which will come into effect on June 17th. Registrations with renewal dates after June 17, 2019 will be granted a ten-year renewal term while registrations with renewal dates before June 17, 2019 will be granted a 15-year renewal term. Currently, the Canadian Trademarks Office has no restrictions on how far in advance a registration may be renewed. However, as of June 17, 2019, it will only be possible to renew a trademark six month in advance of the renewal deadline. Please note that there will be a “Service Interruption” at the Canadian Trademarks Office from June 13, 2019 to June 17, 2019 in order to update existing software. During this time all online services, including filings and renewals, will be unavailable so trademark owners should renew their marks in advance of June 13, 2019 if they would like to take advantage of this opportunity.

Trademark owners may also want to review the goods and services in their registrations and delete any for which there is no further use because all trademark owners will be required to pay renewal fees based on the goods and services recited in their registrations, regardless of whether they wish to maintain registrations for all of these goods and services or not.

Eliminates the government registration fee for new applications
Currently, trademark applicants in Canada pay both filing and registration fees. When the reforms go into effect on June 17th, applicants will only be required to pay the filing fee on new applications filed as of June 17th. However, the registration fees will still be required on existing applications filed prior to June 17th.

The standard protection for trademarks will be shortened from 15 years to 10 years
Finally, the new reform aligns the duration for trademark rights in Canada with the international standard. As a result, the duration for trademarks will be shortened from 15 to 10 years, after which marks may be renewed for a further period of ten years.

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Overall, the new Canadian trademark reforms will bring the country’s trademark law more in line with the rest of the world, and establish a simplified, more affordable system for trademark holders. This reform should allow right holders to increase the scope of their trademark protection in Canada and as such, offers new avenues for the enforcement of their IP rights in the country.