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New Era in Canadian Trademarks

On June 17, 2019, Canada overhauled its trademark regime, allowing Canada to accede to three treaties standardizing our trademark system with some our of global trade partners. The Singapore Treaty, the Madrid Protocol and the Nice Agreement, relate to categorizing trademarks by the type of goods and services and allow a process akin to a ‘global trademark’.

The changes, made through amendments to the Trademarks Act (including renaming it from the Trade-marks Act to the Trademarks Act), and accompanying Trademark Regulations, came into force June 17, 2019.

One of the more controversial changes was to remove the requirement that a trademark application include a declaration or statement of the ‘use’ of the trademark in Canada. The previous legislation included a requirement that an application for a trademark include:

30(b) … in the case of a trade-mark that has been used in Canada, the date from which the applicant or his named predecessors in title, if any, have so used the trade-mark in association with each of the general classes of goods or services described in the application;

There is a concern that without any statement of whether or when the mark has been used, it will be more difficult to assess registered trademarks to determine whether a registration was or is being used in commerce in Canada.

More trademarks have been registered in the 45 days after the changes than in the first five and half months of the year. In 2018, approximately 2100 applications were registered per month while in each of June and July of this year over 10,000 applications were registered.

Some of the influx of registrations in June were applicants filing in advance of the change to take advantage of a longer term of registration. Prior to June 17th, registered trademarks had a term of 15 years before a renewal was required. For marks registered after June 17th, the term is 10 years, subject to renewal. For marks with many classes of goods and services, cost of renewing the trademark under the new regime will be significant higher than prior to the changes.

The expectation is that because of the changes to the ‘use’ requirements, there will be more oppositions and invalidity proceedings, such as for non-use under section 45 of the Trademarks Act. Changes to the opposition procedures were also part of the changes, including limiting the ability to add new evidence on appeals.

A few additional amendments have not yet come into force arising from legislation that received Royal Assent in December of 2018 (see Bill C-86). These further amendments include expanding the procedural rules before the trademark opposition board, and preventing enforcement of a trademark in the courts unless the mark was in use in Canada (or there were special circumstances).

A significant part of the amendments that came into force in June was incorporating Canada into the Madrid Protocol. This system allows an owner of a trademark in a first jurisdiction to obtain trademarks in other countries that are part of the Madrid Protocol with reduced formalities. The system also allows owners of Canadian registrations to use the system to get trademarks in other jurisdictions. So far about 7% of the trademark applications filed in Canada since June 17th are under this Madrid Protocol although as of the date of writing, none have been registered. Interestingly, one of this Madrid Protocol application is the first new ‘non-traditional’ filing, a 3-dimensional design, permitted under the amended Trademarks Act, along with colours, holograms, moving images, taste, scents and texture.

This is the early days of the new era in trademarks for Canada and the early data suggests that big changes are coming to how we process, file, enforce trademarks in Canada.

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