In 2014, the Canadian government passed legislation which made significant changes to the Trademarks Act. Those changes will come into force on June 17, 2019.
The key changes are summarized below.
"Use" No Longer Required
Currently, all trademark applications need to specify "use" of the trademark, whether it be current use, proposed use, or use abroad. After June 17, 2019, the "use" requirement will be eliminated.
Expansion of the Definition of "Trademark"
The definition of "trademark" will be dramatically expanded to include any "sign or combination of signs" that serve that purpose. This means that protection might be available for marks such as: a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture or the positioning of a sign.
Implementation of Nice Classification
Goods and services will need to be classified according to the Nice Classification, which is the international classification system.
Filing fees will also be based on Nice Classification. The fee will be $330.00 for the first class and an additional $100.00 for each additional class. This will represent a substantial increase from the current flat fee of $250.00.
Applicants would be wise to file multi-class applications prior to June 17, 2019, to avoid the increase in fees.
Division of Applications
After the changes come into force, it will allow applications to be divided which may help speed up the registration for certain goods and services by allowing the applicant to "carve out" contentious portion(s) of the application so that the non-contentious portion(s) may be pushed through more quickly.
Changes to the Renewal Terms
The renewal terms will shorten from 15 years to 10 years.
Renewal fees will be calculated based on the number of classes. Applicants will be required to pay $400.00 for the first class and an additional $125.00 for each additional class. Currently, the renewal fee is a flat rate of $350.00. You might consider renewing your trademark registration now to avoid the increase in fees.
No More Associated Marks
Provisions relating to "associated" marks (i.e. trademarks that are confusing with one another but are owned or applied for by the same person) will be eliminated. This means that such marks will no longer need to be transferred together and documentation regarding the transfers of such marks will not be required.
International Effects
In addition to adopting the Nice Classification, Canada will also be adopting the Madrid Protocol which will allow Canadian applicants to file applications with the International Bureau of the World Intellectual Property Association. Similarly, Canada will accept applications from the International Bureau.
What Now?
Now is a good time to review your trademark portfolio. If you are thinking about filing a trademark application, do it before the changes are implemented as there will be a significant cost incentive, especially for multi-class applications. Take into consideration the following example:
Currently, you might include goods in your trademark application that you might put your trademark on in the future. You could delete these from your application before your registration is finalized. For instance, if you have a restaurant, in addition to restaurant-related services, you might include promotional goods in your trademark application, such as shirts and mugs. It makes sense to do this for three reasons:
- There is no additional cost for adding these promotional goods,
- There is no additional cost for deleting any promotional goods prior to the finalization of your registration, and
- It makes it easier to stop others from putting your trademark, or a confusingly similar trademark, on those promotional goods.
However, once the changes come into force, it might get too costly to include these promotional items. You will have to decide if it is worth the extra costs once the changes come into effect.
We will continue to monitor the situation and provide updates that arise in the months leading up to the implementation of the changes.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
