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Executive Summaries Jan 18, 2019

Amendments to the Canadian Trademarks Act Coming Into Force on June 17, 2019

The Canadian Trademarks Act has been amended to enable Canada to accede to the Singapore Treaty, the Madrid Protocol and the Nice Agreement, as well as to modernize Canada’s trademark regime. These amendments will come into force on June 17, 2019.

What follows are some of the key changes and comments relating thereto.

Removal of the use requirement 

All bases for the registration of a mark (use or making known in Canada, foreign registration and use, proposed use in Canada) have been removed. The applicant will solely be required to have used its mark in Canada, or to intend to use its mark in Canada. It will no longer be necessary to provide a date of first use in Canada, nor will it be necessary to file a declaration of use for a mark in order to proceed to registration.

The removal of the necessity to file a declaration of use will apply to all proposed use applications pending as of June 17, 2019. However, the payment of the registration fee of $200 will still be required.

Nice Classification

The goods and services in all new applications will need to be grouped according to the classes of the Nice Classification.

Pending applications that have not been advertised as of June 17, 2019 will need to be amended to group the goods or services according to the Nice Classification. Likewise, grouping the goods or services according to the Nice Classification will be required for the renewal of a registration that expired on or after June 17, 2019, if the renewal is requested on or after that date.

In anticipation of the coming into force of the amended Trademarks Act, the Canadian Intellectual Property Office (CIPO) allows and encourages trademark owners to classify their goods or services on a voluntary basis in order to speed up the registration process, as well as the subsequent renewal process.

Filing Fees for trademark applications

The filing fee for a trademark application filed electronically will be $330 for the first class of goods or services, plus $100 for each additional class of goods or services as of the filing date of the application.

Trademark applications filed before June 17, 2019 will not be subject to the payment of the filing fee per class (presently the filing fees are $250, independent of the number of classes). Accordingly, there could be significant savings in filing an application covering multiple classes of goods or services before June 17, 2019.

Term and Renewal of Registrations

Registrations issued after June 17, 2019 will be in force for 10 years from the date of registration. Registrations issued before June 17, 2019 will remain in force for 15 years from the date of registration; their term will be reduced to 10 years at the time of their next renewal.

The fee for renewing a trademark registration electronically will be $400 for the first class of goods or services, plus $125 for each additional class of goods or services. Renewal applications filed before June 17, 2019 for registration expiring after that date will not be subject to the payment of the renewal fee by class. The previous renewal fee ($350 if filed electronically) will apply.

Applications will be examined for distinctiveness

CIPO will examine application for distinctiveness of the trademark. CIPO has indicated that it will provide further information regarding the determination of inherent distinctiveness during examination, but this information is not yet available.

Applications that have not been advertised as of June 17, 2019 will be reassessed for inherent distinctiveness and, if applicable, the applicant will be given the opportunity to provide evidence that the mark was distinctive at the time of filing the application.

New types of marks

It will be possible to register non-traditional marks, including hologram, moving image, scent, taste, colour per se, a three-dimensional shape, a mode of packaging goods, a texture, or a positioning of a sign. However, practically speaking, it may be difficult to register a non-traditional mark, given that would be examined for inherent distinctiveness.

Other amendments

Other notable amendments coming into force on June 17, 2019 include:

  • the possibility to obtain international registrations through the Madrid Protocol;
  • the ability to divide applications and merge registrations resulting therefrom;
  • the abolishment of the concept of associated marks;
  • reduced evidentiary requirements in certain cases when transferring ownership;
  • greater flexibility in correcting errors; and
  • the option to file evidence electronically in administrative proceedings.

Finally, further amendments to the Trademarks Act are expected as a result of Bill C-86, an omnibus budget bill introduced in October 2018. The proposed amendments include:

  • adding bad faith as a ground of opposition to the registration of a trademark and for the invalidation of a trademark registration;
  • preventing the owner of a registered trademark from obtaining relief in infringement or depreciation of goodwill proceedings during the first three years after registration, unless the trademark was in use in Canada during that period or special circumstances excuse the absence of use;
  • clarifying the prohibition against the use of a badge, crest, emblem or mark that was the subject of a public notice of adoption and use as an official mark by an entity that is not a public authority or no longer exists; and
  • providing the Registrar with additional powers in administrative proceedings, including granting confidentiality orders, awarding costs and providing case management deadlines.

Bill C-86 received Royal Assent on December 13, 2018. Some amendments to the Trademarks Act will come into force on June 17, 2019, for instance bad faith as a ground of opposition. Others will come into force on a day to be fixed by order of the Governor in Council.

For further information, please contact Johanne Auger or Frédéric Dionne who will be pleased to assist you with your trademark needs in Canada.

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