Upcoming Changes to the Trademarks Act: What to Expect
While the specific date for implementation of the new legislation remains uncertain, it is highly likely that it will come into force sometime in 2019.
These changes will have 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 key to learn the effect of these changes.
Changes to align Canada with international trademark law and standards
The revised Trademarks Act and 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 will adopt the standard procedures of the Singapore Treaty and the Nice Agreement and will ratify and implement the Madrid Protocol. Adhering to these internationally used conventions will make is easier for Canadian businesses to protect their trademarks internationally and expand their businesses beyond Canada's boarders. It will also make it easier for international companies to seek protections for their businesses and trademarks in Canada.
Changes to the use requirements for registration
Under the current trademarks regime every application must contain a "use" grounded filing basis. Applications can be based on use of the trademark in Canada, proposed use of the trademark in Canada, the trademark having been used abroad and made known in Canada, or use and application/registration of the trademark abroad. Currently, a trademark cannot be registered having been filed on the basis of proposed use until the mark is used in Canada.
The revised trademark legislation eliminates the need to include filing grounds in an application. Whether an applicant has used the trademark or intends to use the trademark will become irrelevant. Anyone will be able to file a trademark whether they intend to use it or not. The changes to the use requirements for registration will also mean that any applications that are allowed prior to the implementation of the new legislation will not require a declaration of use. Applicants will be able to simply pay the registration fee. They will no longer need to declare that they are using the trademark in Canada to achieve registration of a mark.
Changes to the trademark registration process
The registration process will also be changing to adhere to international standards, including the Nice Agreement (concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks) (the "Nice Agreement"), the Singapore Treaty on the Law of Trademarks (the "Singapore Treaty") and the Protocol relating to the Madrid Agreement (concerning the International Registration of Marks) (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, this means that applicants for trademark registrations now have the option to indicate the class(es) of goods and services into which their proposed mark will fall. While doing so will not be mandatory until the full changes to the Trademarks Act commence in the near future, it may be helpful to do in advance of coming into force since all trademark applications will have to be revised to reflect the Nice Classification system.
Changes to government application fees
The implementation of the Nice Classification system will also result in changes to the relevant government application and registration fees. Currently, the Canadian Intellectual Property Office (CIPO) charges a $250 CAD flat fee for filing and a $200 CAD fee for registration, regardless of the number of classes that the applicant is filing for.
The draft Trademark Regulations' schedule of fees outlines that under the new regime, the fee for the first class of goods and/or services included in an application will be $330 CAD if the application and fee are submitted through the Canadian Intellectual Property Website. For each additional class of goods or services to which the application relates as of the filing date CIPO will charge $100 CAD. If a paper copy of the application is filed, the initial fee for one class will be $430 CAD and $100 CAD for each additional class of goods or services to which the application related as of the filing date.
Changes to the term of trademark protection and renewal fees
The term for which a trademark is currently registered in Canada is 15 years from the date of registration. Once the new legislation comes into force that term will be 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 will now cost $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 will be charged.
Changes to trademark eligibility
The new amendments broaden the scope of what is considered eligible for trademark registration purposes. Previously, only traditional trademarks such as word marks, design marks and distinguishing guises were eligible for legal protection.
In recognition of the changing marketing landscape, non-traditional trademarks such as holograms, animated images, and scents may now be eligible for protection in the Canadian market. To qualify for registration, non-traditional trademarks will be examined for their distinctiveness at the time of use (which differs from evidence of prior use). Assessment of distinctiveness will be determined based on unique characteristics of the proposed trademark rather than consumer recognition and goodwill. This change will aid business owners who use non-traditional marketing methods to engage consumers and simultaneously protect their interest in their unusual trademarks.
Steps to take for trademark owners
If you currently own or are considering applying to register a trademark in Canada, now is a good time to evaluate your situation and consider whether you should apply for protection now or wait until the changes to the Trademarks Act take place.
It may be helpful to consider the following factors when making your decision:
- Do you intend to use your trademark only in Canada?
If you are a Canadian applicant that does not intend to obtain international protection for the trademark in question, then it may be useful to file your application now. Doing so will likely result in broader protection and a less expensive application process.
- Is your trademark currently eligible for protection?
Some non-traditional trademarks, such as animated images, will not be eligible for protection until the new rules take effect.
- Have you used your trademark commercially, or intend to do so in the near future?
Current requirements stipulate that you declare use as part of the registration process; if you do not intend to use your trademark soon, you may have issues with obtaining registration.
- Is your trademark almost due for renewal?
If so, it may be helpful to renew it before additional fees and a shorter period of protection come into effect in the next couple of years.
While these points may be useful as preliminary considerations, if you are evaluating when to file your trademark application, you may wish to consult a trademark agent for a more detailed analysis of your options.
Changes to the Trademarks Act that will be occurring in the coming years will affect trademark registration and classification both in Canada and abroad. While the exact date of implementation remains to be announced, it is important to familiarize yourself with these changes now and assess how they will impact the trademark(s) you use in your business operations. This article may be helpful if you are deciding whether to apply for a trademark registration now or when the full scope of changes takes effect.
Will you and your business be ready for the change?