Canada plans to implement major changes to its trademark laws on June 17, 2019. The changes are designed to modernize the current system and bring Canada’s quirky practices into greater international alignment. We provide an overview of the current system, the changes to come, and some practical considerations for brand owners.
The biggest change is the elimination of the requirement that a trademark be used in Canada prior to its registration. Canada will leave the US behind as a use-based jurisdiction and join the European Union, Japan and China, and many other nations that grant registration prior to proof of use. Aspiring applicants who might have had difficulties meeting Canada’s usage requirements will be eligible to register their trademarks in Canada as soon as the new law goes into effect. And those who own pending applications that have been allowed by the office will see their applications be automatically registered without filing a Declaration of Use once the new act comes into force.
Canada’s switch from a use-based registration to a filing-based system means that brand owners should evaluate whether it makes sense to file anew in Canada with a more broadly worded description of goods and services
The second biggest change is that Canada will be adopting the Nice Classification of Goods and Services system as part of its integration into the Madrid Protocol. The Madrid Protocol is an international registration system which allows trademark applicants to file one central application that can be extended into any country that is a party to the Protocol upon designation. This system usually shortens and streamlines the process of obtaining trademark protection abroad. (It is available to US-based applicants since the US is a member of the Madrid Protocol.)
In addition, the term of trademark registration in Canada will change from 15 years to ten. Any registration granted prior to the June 17, 2019 changeover will be given a 15-year term, but those granted thereafter will have five fewer years of registration until renewal is due. The cost of applying will see minor changes: Canada will do away with registration fees but start charging application fees per class.
Other changes include a broader definition of “trademark” that will allow for the registration of what was previously considered to be unregistrable. In addition to recognizing letters, words, sounds, and designs as protectable, the definition will expand to include colors, personal names, numerals, figurative elements, three-dimensional shapes, holograms, moving images, modes of packaging goods, scents, tastes, textures, and positioning of signs.
The way in which the Canadian Trademark Office determines whether a mark is distinctive will also change, so that the source of a mark’s distinctiveness is no longer confined to how it is used within Canada’s borders. Thus, companies looking to branch out to Canada can start building their case that their mark is distinctive even before they provide actual goods and services there – as long as their reputation precedes them. Proof of distinctiveness will be required only if the application is specifically based on distinctiveness or if further evidence is requested by the Trademark Office.
Finally, the changes will allow any third party to submit a letter of protest to alert the Office to reasons that a certain application should not be registered. This change will allow third-party registrants to play a more active role in protecting their trademark rights in Canada.
We recommend that you contact us before the new law is implemented so we may discuss how to best secure your rights and to discuss any questions you may have about the new law’s effect on your existing trademark rights in Canada.