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UPDATES TO TRADEMARK LAW IN CANADA

This article gives a general description of the upcoming updates to trademark law in Canada. The information contained in this article is of a general nature only and is not intended to cover the entire area of law relating to the upcoming updates to trademark law in Canada. Furthermore, this information is not directed toward a particular factual situation, and does not constitute legal advice. If you have any questions of a legal nature, or of how the law applies in a particular situation, please consult with a Canadian trademark lawyer or with a Canadian Registered trademark agent.



Introduction

After years of consultation, very substantial changes to Canadian trademark law will come into force on June 17, 2019.

These changes will effect owners of already registered Canadian trademarks, current Canadian trademark applicants, as well as future applicants. These changes will effect the Canadian legal trademark rights of both Canadian and foreign businesses.

The Canadian Government website (the Canada Gazette) describes these changes in general terms as allowing “for the implementation of the Singapore Treaty on the Law of Trademarks (Singapore Treaty); the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol); and the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement)”.

A link to the new Trademark Regulations, effective June 17, 2019, is provided.

The Highlights

1. It will no longer be necessary to actually use a trademark in Canada, or elsewhere in the world, in order to obtain registered Canadian trademark rights. Historically, Canadian trademark applications have required that the applicant indicate that the trademark has either:

a. already been used in Canada, or
b. that it is intended to be used in Canada (in which case the Canadian registration is only granted after the filing of a Declaration of Use), or
c. that the proposed trademark had been used in a foreign jurisdiction, and applied for, or registered, in that foreign jurisdiction.

As of June 17, 2019, this will no longer be required in Canada and this is a substantive and significant change to Canadian law, and to the future practise before the Canadian Trademarks Office and Canadian Courts.

2. The term of Canadian trademark registrations will be reduced from 15 years (renewable), to 10 years (renewable) (Revised Trademarks Act, s 46(1)).

3. Statutory support will be provided for the registration of non-traditional trademarks such as taste, texture, scent, and single colors, amongst others (Revised Trademarks Act, s. 2 “sign”, “trademark”).

4. Canada will adopt the Nice Classification system for new trademark applications, and for those applications which have not yet been advertised, and “per class” government fees will be applicable ($330 for the first class, and $100 for each additional class) (Revised Schedule, Tariff of Fees, item 7). Historically, Canada has allowed applicants to simply describe their goods and services in “ordinary commercial terms”, with an unlimited number of goods and services included in a single application for the same government fee. This amendment will substantially increase the government fees associated with new multiple-class applications filed after June 17, 2019.

5. At the examination stage, the Examiner will now consider whether or not the applied for trademark is distinctive (Revised Trademarks Act, s 37(1)(d)).

6. Canada will join the Madrid Protocol, allowing Canadian applicants to file a single application designating all members of the Madrid Protocol for registration of the trademark in more than 100 member countries (Revised Regulation 98), and allowing applicants from the member countries of the Madrid Protocol to designate for filing into Canada (Revised Regulation 103).

Footnotes:

Revised Trademarks Act

. . . 2. In this Act . . .

“Sign” includes a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture, and the positioning of a sign;

“Trademark” means a sign or combination of signs that is used by a person for the purpose of distinguishing or so as to distinguish their goods or services from those of others . . .;

...

37 (1) The Registrar shall refuse an application for the registration of a trademark if he is satisfied that . . .

(d) the trademark is not distinctive . . .

...

46 (1) Subject to any other provision of this Act, the registration of a trademark is on the register for an initial period of 10 years beginning on the day of the registration and for subsequent renewal periods of 10 years if, for each renewal, the prescribed renewal fee is paid within a prescribed time. Revised Trademarks Regulations (as of June 17, 2019 )

...

98 A person may file with the Registrar an application for international registration of a trademark for presentation to the International Bureau if they meet the following conditions:

(a) the person is a national of or is domiciled in Canada or has a real and effective industrial or commercial establishment in Canada; and
(b) the person is the applicant in respect of a basic application for the trademark or, if there is a basic registration in respect of the trademark, the registered owner of the trademark.

...

103 (1) On the registration of a trademark in the International Register on the basis of an application that contains a request made under Article 3ter(1) of the Protocol for the extension to Canada of the protection of a trademark resulting from its international registration, an application is deemed to have been filed under subsection 30(1) of the Act by the holder of the international registration for the registration of the trademark and in respect of the same goods or services that are listed in that request.
(2) On the recording in the International Register of a request made under Article 3ter(2) of the Protocol for the extension to Canada of the protection of a trademark resulting from its international registration, an application is deemed to have been filed under subsection 30(1) of the Act by the holder of the international registration for the registration of the trademark and in respect of the same goods or services that are listed in that request.

...

Item 7 of Schedule, Tariff of Fees

Application for the registration of a trademark

(a) if the application and fee are submitted online through the Canadian Intellectual Property Office website
(i) for the first class of goods or services to which the application relates ($330.00)
(ii) for each additional class of goods or services to which the application relates as of the filing date ($100)
(b) in any other case
(i) for the first class of goods or services to which the application relates ($430.00)
(ii) for each additional class of goods or services to which the application relates as of the filing date ($100)



ABOUT THE AUTHOR

Philip B. Kerr is a Canadian patent lawyer, a Registered patent agent and a Registered trademark agent. He is a partner in the patent law firm of Kerr & Nadeau, whose law practice is restricted to patent law, trademark law and copyright law. He was called to the bar in 1986.

Kerr & Nadeau has two locations:

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Email: info@kerrnadeau.com




For further information on patents, please contact Philip B. Kerr.