What you need to know sooner than later regarding the upcoming amendments to the Canadian Trademarks Act

November 28th, 2016

When it comes to establishing a trademark protection strategy, the amendments to the Canadian Trademarks Act, which will come into force in 2018, need to be taken into account right away.

Our partners Johanne Auger and Frédéric Dionne have identified five key elements in light of the coming into force of the significant amendments to the Trademarks Act.

  1. If you plan to use a mark in Canada, it is in your interest to file a trade-mark application promptly to ensure that that your application will be granted when the amendments come into force. This will save you having to file a declaration of commencement of use of the mark in Canada to obtain registration;

  2. Broad descriptions of products and services should be considered to block the Canadian register equally broadly given that use in Canada will no longer be required to register a mark in Canada once the amendments to the TMA come into force;

  3. If you are contemplating offering numerous products and services under the same mark, it is in your interest to file and application for registration to avoid having to pay prescribed fees that that will apply to different categories of products and services when the amendments to the TMA come into force;

  4. If you are doing or plan on doing business abroad, you should ensure that your trade-mark has proper Canadian registration because in the future your registration could be used as the basis for international registration when Canada signs the Madrid Protocol;

  5. As foreign trade-mark registration in Canada will be facilitated in 2018, you would be wise to be prepared and properly protect your mark in Canada before the onslaught of foreign filings. Similarly we strongly recommended that you monitor your mark.

The above-mentioned five issues were discussed in detail during the conference given by Johanne Auger and Frédéric Dionne in Montreal last October 26th and by Johanne Auger in Quebec last November 2nd, as part of BCF’s “Ateliers casse-croûte”.

Contact our team of trade-mark specialists and find out more about the enactment of these major changes to Canadian law and be prepared for how they will affect trade-mark protection in Canada and abroad.