After numerous delays, Canada is finally implementing the new provisions set out in the “Trade-marks Regulations”
The Canadian government has recently published the Regulations in the Canada Gazette as a part of the process to enact the new legislation. The act is the last formal step before the implementation of the provisions based on the 2014’s Trade-mark Act. The provisions will have a profound impact on Canadian trademark law.
In this regard, the date for the implementation of the Regulation and the provisions has been set for 17 June 2019.
The changes in the Canadian trademark law have a major impact on all stages of Canadian trademark lifecycle. The main changes can be divided into two categories:
I / Main provisions
- Expanding the definition of a trademark
New types of registerable trademarks will be introduced such as colors, scents, textures and tastes.
It is also noteworthy that for the first time the Canadian Intellectual Property Office (CIPO) will examine the distinctiveness of submitted trademark applications. The CIPO will get the possibility to ask for proof of distinctiveness of non-traditional trademark types. This practice can potentially render the trademark registration process more complicated. One can better gage the impact of the new legislation on the trademark registration process once the CIPO announce its’ decisions regarding the non-traditional trademarks.
- Implementing the Nice Classification of goods and services
All new trademark applications filed after June 17, 2019 will be classified according to the Nice Classification system, issued from the Nice Arrangement et now adopted by the Canadian legislation.
All trademark applications filed before the date on which the new law will come into force will be suspended until the wording of the application is modified according to the new law.
It is therefore advisable to use the Nice Classification system for new trademark applications to avoid delays in Canadian trademark registration process.
- Eliminating the “filing grounds” requirement
It will be no longer necessary to provide a reason for filing a Canadian trademark application. Any applicant who uses or plans to use a trademark can file a trademark application without providing any reason for it.
This goes hand in hand with eliminating the requirement to provide a declaration of use.
- Possibility of claiming priority
Starting from 17 June 2019, a priority claim can be made based on any previous trademark application. It is no longer confined to the applicant’s country of origin.
- Eliminating the requirement to provide a declaration of use
One of the most notable provisions of the new “Trade-Mark Regulations” is the elimination of the requirement to provide a declaration of use.
Meaning that starting from June 17, 2019, a trademark application that has been accepted for examination may be registered as soon as the applicant pays the registration fee. The changes will lead to greater savings for Canadian trademark applicants as the extension of application deadline and declaration of use will be eliminated.
The new provision will apply starting from the date when the new law will come into force.
Therefore, if a trademark application was filed before June 17, 2019, the owner of the trademark will have the opportunity to extend the deadline to file a declaration of use until the date when the new law will come into force. In this case, the applicant will no longer be required to provide the declaration of use.
- Calculating registration fee per class
Registration fees for Canadian trademarks will be calculated based on the number of classes of goods and services ($300CA for one class and $100CA for each additional class if application is filed online), instead of a single government filing fee of $250CA that applies today. The registration fee for a paper deposit will be higher.
It is advisable to file several trademark applications that correspond to the filing system based on different classes of goods and services before the new legislation comes into force.
- Dividing trademark applications
Another option offered by the Canadian “Trademark Regulations” is the ability to divide trademark applications. Applicants will have the opportunity to split a trademark application into different classes, into different products and services, and then to merge the previously divided registrations.
The option can be very advantageous, particularly when an opposition has been filed against some of the goods and services designated by the trademark application or in case when a provisional objection was issued.
Thus, it will be possible to obtain a registration for products and / or services that initially were not included in trademark application. If the initial application is accepted for other products and services, then a second application will be filed.
- Accession to the Madrid Protocol
Canada’s accession to the Madrid Protocol represents a significant change as it makes it possible to designate Canada as part of an international trademark application. It will lead to an increase in the number of trademarks registered in Canada.
- Eliminating evidence of transfer requirement
No documents will be required to record a trademark assignment or a transfer. However, the Canadian Trademark Office will still be able to request such proof, but it will no longer be required at the time of registration.
In addition, it will no longer be necessary to associate trademark assignment or transfer with related trademarks.
- Registration and renewal terms
Trademark registration and renewal terms are reduced to 10 years instead of 15.
Renewal fees will be calculated based on the number of classes being renewed ($ 400CA for one class and $ 125CA for each additional class).
The new renewal fees should be paid starting from June 17, 2019 and no earlier than 6 months before the expiry date of a trademark.
As a continuation of Canada’s accession to the Nice Agreement, it is expected that the trademarks being renewed must comply with the Nice Classification and, therefore, the trademark rights holders will have to modify products and services accordingly.
- Possibility to inform the Canadian office of the existence of third party rights
The “Trademark Regulation” offers the possibility to inform the Canadian Trademark Office about existing third party prior rights during application examination process.
Third party prior rights were considered by the Trademark Office only during opposition proceedings.
It may be useful for protecting trademark rights and avoiding opposition proceedings.
II / Transitional provisions
The date of implementation of certain provisions is not yet determined. Therefore transitional provisions have been put in place including:
- Examining the distinctiveness of a trademark will apply to all pending trademark applications
According to the Regulations, the distinctiveness of a trademark will be now examined based on priority of application.
Meaning that all trademark applications, including the applications that were filed before June 17, 2019 will be examined for distinctiveness.
- Changes in processing time
Processing time in some cases such as provisional refusal of registration have been modified.
In this respect, it is important to note that processing time changes apply only to refusals issued after June 17, 2019.
- Grounds for opposition will apply to applications filed before June 17, 2019
Grounds for an opposition in Canada may be requested for any opposition proceeding before June 17, 2019, even if the opposition period expires after that date. This is also the case for trademark applications published before June 17, 2019.
Oppositions can be based, for example, on the grounds on which the deposit is based, which will no longer exist after coming into force of the said Regulation.
Consequently, trademark applications and oppositions filed after coming into force of the new Regulations can, for example, be based on the fact that an applicant does not use or does not intend to use the trademark.
The purpose of the Canadian “Trademark Regulations” is to simplify Canadian trademark applications and to allow more businesses to obtain trademark protection in Canada.
The disadvantage of a simplified process that eliminates the requirement to file a declaration of use increases the risk of fraud from third parties who file trademark applications without the intention to use them.
Further changes will be implemented as the consequence of an Agreement between the United States, Mexico and Canada as well as the C-86 budget law implementation.
Like any legislative changes, the practical application of the new provisions will depend on interpretation given by judge, especially in the case of trademark distinctiveness examination.