After years of uncertainty, a date has been set for the implementation of Canada’s new trademark law: June 17, 2019. Canadian trademark law will undergo some significant changes. Some of the most important of these changes are listed below, along with some recommendations for brand owners and professionals to consider prior to the implementation of the new law.
Notable Changes Coming to Canadian Trademark Law
Recommendations to Consider Before Implementation of the New Trademark Law
- Use: Trademark applications will be simplified, no longer requiring the claim of a date of first use.
- Declarations of Use: Currently, declarations are required to obtain a registration in cases in which the Canadian application is based upon proposed use. Under the new trademark law, declarations of use will no longer be required. This will apply to all new applications as well as all pending applications.
- Divisionals: It will now be possible to divide applications, which will be of strategic assistance during prosecution and oppositions. For example, during prosecution, if an Office Action only objects to a subset of the goods and services, those goods and services can be divided out and included in a separate divisional application, which can then be prosecuted separately. Similarly, during an opposition, if an opponent is only concerned about a subset of the goods and services, those services can be divided out. The opposition will then continue with the divided application. However, the applicant can promptly obtain a registration for the parent application.
- Term: The registration term will be ten years from the registration date for new registrations. The 15-year term for existing registrations will not change.
- Madrid: Canada will become a member of the Madrid Protocol.
- Nice: Nice Classification (11th Edition) of goods and services will be mandatory.
- Registration Fees: The government registration fee will be eliminated for new applications. Accordingly, the only government fee for new applications will be the filing fee.
- Class Fees: Consistent with most of the rest of the world, fees per class will be introduced. Examples include the following:
- The trademark application filing fee will be $330 CAD for the first class plus $100 CAD for each additional class, instead of the current $250 CAD filing fee regardless of the number of classes.
- The registration renewal fee will be $400 CAD for the first class plus $125 CAD for each additional class, instead of the current fee of $350 CAD regardless of the number of classes.
- File multiclass applications before June 17, 2019, to save fees.
- Renew registrations before June 17, 2019, to save fees.
Beware of trademark trolls. Historically, trademark trolls were not a problem in Canada because it was not possible to obtain a trademark registration in Canada without use. However, trolls have arrived in Canada in anticipation of the change in law. (See CANADA: Trademark Trolls on the Rise
, from the September 15, 2018, INTA Bulletin
To avoid falling victim to trolls, file applications in Canada promptly, especially in cases in which a trademark has a reputation abroad but not in Canada. In those cases, legitimate trademark owners that do not promptly register their brands in Canada, risk having a troll register them first.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.
© 2019 International Trademark Association