Our neighbors in Canada have enacted the first major revision to its trademark law (Trade-marks Act) in fifty years. This article will cover the key changes to the laws taking effect on June 17, 2019. A second article will cover more details about the impact to trademark strategy in Canada as well as what you can do now.
“Use” in commerce is no longer a requirement for Registration
Going against the trend of many countries, including the United States, Canada will no longer require the trademark to be used in connection with the goods/services as filed before a trademark Registration will issue. Removing ‘use’ requirements also means no basis for filing or first use in commerce dates will be required.
Signatory to the Madrid Protocol
Canada will join 120 countries, including the United States, Mexico, and the European Union, in its adoption of the Madrid Protocol (Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks). This will offer parties a chance to extend a ‘home’ application filed in any of the Member countries to any or all of the others through the centralized World Intellectual Property Office (WIPO).
This will great streamline, simplify, and reduce costs associated with International filings, especially between the United States and Canada.
Adoption of Nice International Classification System (NCL)
Canada will follow many other countries, including the United States, in adopting the Nice International Classification System. The goods and services claimed in trademark applications will now need to be listed according to the forty-five different classes of goods and services designated in the Nice System. Only one class of goods or services is included in the $330 CAD application fee; each additional class will be $100 CAD.
Examination for ‘Distinctiveness’
Canadian trademark examiners will now have the ability to object to a trademark application on the basis it is ‘non-distinctive’ or ‘not inherently distinctiveness.’ Previously, an examiner’s scope of examination was limited to if another mark were confusingly similar, a general descriptiveness review, or upon other technical grounds.
These more stringent requirements will also extend to non-traditional trademarks, now called ‘signs,’ such as for sounds, smell, taste, and three-dimensional marks. Proof of distinctiveness, which will likely require substantial use and/or promotional efforts, can also be requested for examination.
It is anticipated this new standard will greatly increase the frequency of substantive objections entered.
Canada will begin permitting trademark applications to be divided and separated. This will greatly speed along the process when part of the application is holding-up its Registration. It may also be beneficial in cases where a portion of the mark is being objected to by another party or in cases of assignment and transfer.
Divided marks will be permitted to be merged together if both mature to Registrations.
The renewal term will be shortened from fifteen years to ten years.
As with the increased application fees for multi-class submissions, a renewal will be $400 CAD for the first class and $125 CAD for each additional class.
The information in this article is for informational purposes only and does not constitute formal, legal advice. Consult with one of the attorneys from RM Partners Law for advice about your specific international trademark protection and strategy. Attorneys at RM Partners Law are also available to assist in reviewing other matters related issues to branding, licensing, copyrights, social media disputes, or website addresses.