On your marks! Ready for changes?

March 27th, 2015

Significant legislative changes for the Trademarks Act in Canada

JOHANNE AUGER | Montreal

Several changes regarding the Trademarks Act and its regulations will come into force in 2016 in Canada.

One of the most important changes to come will be the possibility to obtain a trademark registration in Canada without ever using the trademark in Canada or elsewhere in the world. Canada will nevertheless remain a country where trademark registration must be given to the first one to “use” a trademark (“first to use”) provided that such person enforces these rights by an opposition procedure or a challenge before the courts. This new measure, facilitating trademark registration in Canada, will certainly attract foreign deposits. We will have to be more vigilant with trademark monitoring and make sure to assert our rights in our trade-marks. Otherwise, certain trademarks could lose their distinctive character and their holders could find themselves in a situation where two similar (or identical) trademarks coexist in the market, given that the rules were watered down.

One other important change concerns the registration term, which will now be set to 10 years, instead of 15 years. Canada will also adopt the international system of classification of goods and services, which will most likely lead to an increase of the fees when specific classes of goods and services to be protected are targeted.

Why?

The purpose behind these amendments is to eventually help Canada join the Madrid Protocol. This protocol allows the filing of an international application for trademark registration in several countries. The filing of an international application is dependent on an application for registration or a registration in the country of origin of the applicant. Thus, for Canadian companies, the Canadian application for trademark registration or the registration itself will serve as the basis for an international trademark registration. Therefore, Canada will continue to require specific and detailed descriptions of goods and services for Canadian companies with a trademark registration in order to facilitate their eventual application for foreign trademark registrations.

The impacts of all these amendments to the Trademarks Act are multiple. It is very important for companies to carefully review and analyse their strategy for trademark protection in order to comply with the amendments right away.

It’s time to act!

All companies should review their trademarks and establish a strategy to help protect them in Canada and elsewhere in the world. Please don’t hesitate to communicate with our specialists here at BCF to learn more on this key issue: Johanne Auger, Pascal Lauzon and Frédéric Dionne. They will be happy to take time to answer your questions. On your marks! Ready for changes?