On your marks ! Get ready for some changes to come

April 25th, 2016

Significant legislative changes for the Trademarks Act in Canada

JOHANNE AUGER, partner and trademark agent, FRÉDÉRIC DIONNE, partner and trademark agent & PASCAL LAUZON, partner, lawyer and trademark agent | Montréal

Significant amendments have been brought to the Canadian Trademarks Act, which will likely come into force, at a date to be determined, in 2018.

The following points are part of the amendments in question:

  1. trademark use will not be required anymore to obtain registration of a mark in Canada;

  2. Canada will be part of the designated countries appearing in international applications and therefore available to foreigners in filing same;

  3. pending applications filed on the basis of proposed use of the mark in Canada, which will have reached the allowance stage when the amendments come into force, will not have to comply with the current Declaration of Use requirement to proceed to registration. As the Canadian registration process currently requires approximately 18 months to be completed, there is a clear advantage of quickly filing new applications so that they reach the allowance stage when the amendments to the Act come into force, to avoid the necessity of filing a Declaration of Use to obtain registration;

  4. Canada is currently one of the G8 countries in which registering a trademark is the less costly as governmental prescribed fees are always the same, no matter the number of classes of goods and services covered by an application. In 2018, governmental prescribed fees will apply per class of goods and services, at the time of filing trademark applications and at the time of renewing existing registrations.

The first two above-mentioned points will have the effect of making it easier for foreigners to protect their trademarks in Canada. In light of all of the above, there is a clear advantage of applying now to register trademarks in Canada with a broad scope of goods and services as governmental prescribed fees do not currently apply per class and with a view to broadly “block” the Canadian trademark register before the massive arrival of foreign filings.

Briefly stated, every company should now take into account its short to mid-term marketing plan (3-5 years) with the aim of quickly proceeding to strategic trademark filings while it is still possible to do so in a less costly manner and before the Canadian trademark register gets very crowded.

The above-mentioned amendments to the Canadian Trademarks Act are only some of the most significant ones to come into force, the impact of which needs to now be carefully assessed for any company.

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.