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Significant Amendments to the Canadian Trade-marks Act Came into Force on June 17, 2019

By: Christopher Heer, Toba Cooper, Daryna Kutsyna | Last updated: October 7, 2019

In 2014, the Canadian government proposed amendments to the Trade-marks Act. Through Bill C-31, The Economic Action Plan Act 2014, No. 1, and 2016's Bill C-30 aiming to implement Comprehensive Economic Trade Agreement (CETA), the Trade-marks Act underwent substantial changes this year.

These changes are having a significant impact on the Canadian trademarks system as we know it. If your business currently owns a registered trademark, or is planning to register one soon, it is vital to learn the effect of these changes.

Changes that align Canada with international trademark law and standards

The revised Trade-marks Act and Trade-marks Regulations align Canadian trademark law with that of Canada's major international trading partners including the United States and the European Union. In particular, under the new legislation, Canada adopted the standard procedures of the Singapore Treaty on the Law of Trademarks (the "Singapore Treaty") and the Nice Agreement (concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks) (the "Nice Agreement") and ratified and implement the Madrid Protocol (concerning the International Registration of Marks) (the "Madrid Protocol").

Adhering to these internationally used conventions make is easier for Canadian businesses to protect their trademarks internationally and expand their businesses beyond Canada's borders. Canadians are now able to file a single application and pay one set of fees to apply for protection in over 100 countries. Adoption of the standardized international procedures also make it easier for international companies to seek trademark protections for their businesses and marks in Canada.

Changes to the use requirements for registration

The revised trademark legislation eliminated the need to include filing grounds in an application. Whether an applicant has used the trademark or intends to use the trademark is irrelevant. Anyone is able to file a trademark application whether they intend to use the trademark or not.

Accordingly, there has been a massive surge in applications over the last year as businesses bolt to secure protection for their marks (and their desired marks) and in early defence against trademark squatters (a consequence of the impending changes that has already proven to be an issue for brand owners).

The changes to the use requirements for registration also mean that any applications that were allowed prior to the implementation of the new legislation do not require a declaration of use. Applicants can simply pay the registration fee to complete the trademark registration process. They no longer need to declare that they are using the trademark in Canada to achieve registration of a mark.

Changes to priority claims

Under the amended legislation, an applicant may claim priority to any application filed in the preceding 6 months (not solely applications filed in the applicant's "country of origin").

Changes to the trademark registration process

The registration process also changed to adhere to international standards, including the Nice Agreement, the Singapore Treaty and the Madrid Protocol.

As of September 2015, Canada acceded to the Nice Agreement, which groups goods and services into 34 classes of goods and 11 classes of services with explanatory notes regarding the grouping criteria for each class.

In practice, all goods and services listed in trademark applications now need to be classified in accordance with the Nice Classification system.

Changes to government application fees

The implementation of the Nice Classification system has also resulted in changes to the relevant government application and registration fees.

The Trade-marks Regulations' schedule of fees outlines that under the new regime the fee for the first class of goods or services included in an application is $330 CAD if the application and fee are submitted through the Canadian Intellectual Property Office website. For each additional class of goods or services to which the application relates as of the filing date, CIPO charges $100 CAD. If a paper copy of the application is filed, the initial fee for one class is $430 CAD and $100 CAD for each additional class of goods or services to which the application relates as of the filing date.

Changes to the term of trademark protection and renewal fees

Trademarks prior to the change were registered in Canada for a 15-year term from the date of registration. That term is now shortened to 10 years. Trademark renewals, as a result, will need to be filed every 10 years to ensure that protection is ongoing.

Renewal of the registration of a trademark under section 46 of the Act now costs $400 CAD in government fees for the first class of goods or services to which the renewal related. For each additional class a $125 CAD government fee is charged. Trademark owners are now only permitted to pay renewal fees within 6 months in advance of the renewal date (not before).

Moreover, trademark registrations will now only be renewed if they fully adhere to the Nice Classification system.

If you have additional questions about how to renew your trademark in advance of the coming into force date please contact us, we would be pleased to advise you on this.

Changes to trademark eligibility

The new amendments broaden the scope of what is considered eligible for trademark registration purposes. In recognition of the changing marketing landscape, non-traditional signs such as colours, holograms, animated images, and scents are now eligible for protection in the Canadian market. To qualify for registration, non-traditional trademarks are examined for their distinctiveness at the time of use (which differs from evidence of prior use). Assessment of distinctiveness is determined based on the unique characteristics of the proposed trademark rather than consumer recognition and goodwill. This change in the law aids business owners who use non-traditional marketing methods to engage consumers and simultaneously protect their interest in their unusual trademarks.

Changes to examination procedure – CIPO to examine for distinctiveness

Under the amended legislation, new and pending applications (applications that have not yet been approved), are now examined for distinctiveness. The Registrar of Trademarks has the power to require evidence of distinctiveness as of the filing date for any application containing a mark that the Registrar does not view as inherently distinctive.

Changes to procedure for amending and editing applications and registrations

The new legislation provides greater flexibility for correcting errors made in applications (like permitting an amendment to the trademark itself if the desired mark is substantially the same as the applied-for mark) and the ability to divide applications and amend and merge registrations.

Changes to recordal requirements

Businesses with portfolios of associated marks are no longer be required to provide evidence of mergers or assignments. Under the amended Trade-marks Act provisions relating to associated marks have been repealed. Moreover, the requirement that a registered owner evidence and record a merger or assignment has been eliminated. The result – there is no need to alert CIPO to the merger or acquisition of individual marks or groups of associated marks (and no need to pay the associated fees to do so).

Other recent changes to the Trade-marks Act

It is also worth mentioning that on December 14, 2018, the Federal Government gave royal assent to a massive omnibus budget bill that includes further changes to Canadian trademark law (Bill C-86, The Budget Implementation Act 2018, No. 2, "Bill C-86"). Many of the changes seek to address age-old grievances about trademark practice in Canada and to fill gaps created by the amendments which came into force in June.

Among many changes implemented by the Bill, Bill C-86 addresses the issue of trademark squatters by introducing a "bad faith" opposition and expungement ground. Moreover, to combat some discrepancies in the law created by eliminating the "use" requirement, the Bill requires that until a mark has been registered for 3 years registered owners are required to prove use in an action for infringement or depreciation of goodwill. The Bill also changes the longstanding broad protection afforded to official marks.

Conclusion

Changes to the Trade-marks Act which took effect in June of this year affect trademark registration and the application process both in Canada and abroad.

If you would like to discuss options for registering your trademark following these changes, please contact us for a complimentary and confidential telephone appointment.