As you may recall hearing back in 2014, the Canadian government passed legislation which will make sweeping changes to trademark law in Canada allowing Canada to implement three international treaties, namely: the Nice Agreement, the Singapore Treaty and the Madrid Protocol. After several years of consultations and postponements, the regulations and a new fee schedule implementing the changes are expected to come into force early in 2019. The following is a recap of the more significant changes and our recommended steps to get ready.
At present, applicants may volunteer to classify all goods and services when filing a new Canadian trademark application according to the international classification system under the Nice Agreement. For more information about the Nice classification system, refer to our previous article found here. After the changes come into force, such classification will become mandatory.
At the same time, the CDN IPO will start charging an application fee for EACH class of goods and services contained in a trademark application. Consquently, this change may have significant cost implications for applicants filing new applications.
Increased Application Fees
After the changes come into force, the official fees to file trademark applications will increase to $330 for the first class of goods or services, plus $100 for each additional class.
- For applicants contemplating the adoption of new trademarks for use in association with a wide range of goods and services, applicants are well-advised to consider filing applications to register such marks before the fee increases take effect.
Changes to Renewal
After the changes come into force, the term of all trademark registrations will be 10 years instead of the current 15 years.
In addition, all existing trademark registrations will need to be revised at the next renewal deadline to classify all the goods and services to comply with the Nice Agreement.
Finally, the official renewal fees will also be increasing from $350 per trademark to $400 per trademark for the first class of goods/services and $125 for each extra class.
- If registrants have trademark registrations due for renewal within the next 5 years, the registrations can be renewed early before the per class fee system comes into force.
While early renewal will avoid the increased renewal fees and the need to classify the goods and services until the next renewal date, it will not render a trademark registration eligible for another 15 year term. The registration term is calculated from the renewal deadline and not from the date of the actual renewal. Consequently, if the effective date of the renewal is after the changes come into force, the registration will only be entitled to a 10 year term even if it is renewed before the changes come into force.
Simplification of Filing Requirements
After the changes come into force, many formalities will be removed from the trademark application process. While trademark registrations will still be vulnerable to expungement if a registrant cannot demonstrate use of the trademark in Canada, it will no longer be necessary to use the trademark in Canada to qualify for registration.
As a consequence, applicants will be able to apply for registration without identifying any specific grounds of entitlement. In other words, applicants will no longer be required to specify whether their application is based on: (a) "use" of the trademark in Canada; (b) "proposed use" of the trademark in Canada; or (c) a foreign registration.
There will be no requirement:
- to identify a date of first use when the trademark was used in Canada prior to filing;
- to file a declaration of use or provide specimens to demonstrate use of the trademark; or
- to provide a certified copy of any corresponding foreign registration.
While these simplifications will likely result in a significant increase in the number of trademark applications filed in Canada, it is also expected cause an increase in the number of speculative filings for trademarks in Canada. Over time, speculative filings for trademarks will: (a) crowd the Canadian trademark register with "deadwood" marks and increase the cost of clearing proposed trademarks for adoption in Canada; and (b) increase the risk that Canadian businesses will effectively lose their exclusive rights in non-registered trademarks. For more information about how unregistered trademarks can be vulnerable after the changes come into force, refer to our previous article found here.
- Businesses should consider filing applications to obtain trademark registrations for proposed trademarks without delay since there is no longer any requirement to demonstrate use prior to registration.
- Businesses should consider filing applications to register their previously unregistered trademarks as a defence against speculative applications filed by others.
The failure to use a registered trademark in Canada for a period of three years or more will continue to be grounds for summary expungement. Thus, it continues to be important for trademark owners to retain evidence of how they use and advertise their registered trademarks in case their trademark registrations are ever challenged.
Applications in Progress may be Divided
After the changes come into force, it will be possible to divide pending trademark applications into one or more parts, upon payment of applicable fees for each division. This practice allows greater flexibility processing pending applications where an application faces an objection from the examiner or opposition by a third party.
Division will allow the trademark to be registered without delay for those goods and services to which there is no objection or opposition. At the same time, the applicant can continue its efforts to overcome objections or settle disputes regarding the remaining contentious goods and services.
Marks Eligible for Registration Expanded
Canada already accepts applications to register: (a) one or more words; (b) graphic designs; (c) a combination of words and graphics; (d) a colour or a pattern; (e) features of product packaging; (f) three-dimensional shapes; (g) sounds; and (h) holograms.
After the changes come into force, it will also be possible to register sensory trademarks such as tastes, smells or textures. To support such appplications, applicants will be required to provide evidence that the sensory mark is distinctive of their business and can function as a trademark before such applications will be approved.
- Businesses that already use or are contemplating the use of non-traditional means of identifying their goods or services in the market should consider registering them as trademarks when protection becomes available.
International Trademark Applications – Madrid Protocol
After the changes come into force, Canadian applicants will be able to access a system for the streamlined filing of trademark applications in other countries under the Madrid Protocol. This system will permit Canadians to file a single trademark application through the International Bureau of the World Intellectual Property Office (WIPO) to register trademarks in multiple countries. Foreign applicants will also be able to extend their trademark rights into Canada through the Madrid Protocol.
The availability of the Madrid Protocol will be particularly advantageous for Canadian businesses that operate in multiple countries and need to efficiently manage an international trademark portfolio to protect their brands. Unfortunately, the filing costs will likely make the Madrid Protocol cost prohibitive for small and midsize businesses that are not likely to file trademark applications in more than three countries.
The implementation of these changes in 2019 mark the most significant alteration of Canadian trademark law in recent memory. Canadian businesses would be well-advised to review their trademark portfolios now and prioritize tasks.