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It’s official! – The new Canadian Trade-marks Act will come into effect on June 17, 2019: What should you do to prepare?

After several years of waiting, Canada finally confirmed that the amendments to the Trade-marks Act will come into effect on June 17, 2019. These major changes, involving far-reaching changes to the law, regulation and practical considerations, will have a significant impact on trademark owners in terms of strategy and costs.

We have compiled the most relevant elements and summarized below the major changes that may affect your business or your clients.

Shorter Renewal Period

The duration of a trademark registration in Canada will be reduce from 15 years to 10 years. Existing registrations will be converted at their next renewal.

Abolishment of filing grounds and declarations of use

After June 17, 2019, questions about filing grounds in an application (use, intended use and registration and use abroad) will be a thing of the past.

Eliminating use as a prerequisite for registration is good news for trademark owners with pending applications in Canada due to non-use. Although payment of the $ 200 government fee will still be required, after June 17, 2019, it will no longer be necessary to file a declaration of use to obtain the registration of a pending application.

However, it is important to note that use will remain a crucial element in the protection and defense of a trademark in Canada. In fact, the registrations will remain subject to cancellation for non-use three years after the date of registration.

The Nice Classification

Canada will adopt the Nice International Classification System to classify goods and services.

It will be required to group and classify the goods and services according to the Nice Classification system for any new applications filed after June 17th 2019. In addition, the goods and services covered by all new applications and pending applications that have not been published by June 17th will also have to be classified according to the Nice Classification.

Similarly, the Trademark Office will require the grouping and classification of goods or services according to the Nice Classification to proceed to the renewal of a registration on or after June 17, 2019. Moreover, renewal fees will be calculated by class, as detailed below.

CIPO will also issue random notices requiring the classification of the goods and services covered by trademarks already registered in Canada, even before their renewal date.

The degree of requirement regarding the description of goods and services in ordinary commercial terms and precision remains.

Modification of fees for filing applications for registration

After the reform, government fees will be calculated by class of goods and services.

Currently, government fees for filing a registration application are $ 250 regardless of the number of classes. After June 17, 2019, government fees for filing an application for registration will increase to $ 330 for first class and $ 100 for each additional class.

Therefore, filing an application covering multiple classes of products or services could result in significant savings if made before June 17, 2019.

Increase of renewal fees

On and after June 17, 2019, all goods and services listed in a registration will need to be classified in accordance with the Nice Classification System at the time of renewal and government fees will be calculated on a per-class fee.

Currently, government fees to renew a registration are $ 350 regardless of the number of classes. After June 17, 2019, government renewal fees will increase to $ 400 for the first class and $ 125 for each additional class. It is possible to save by renewing trademark registrations before the implementation of these changes, regardless of the expiry date of the trademark to be renewed.

Indeed, registrations can be renewed at any time before their expiration, for multiple periods and without the need to classify the goods and services. After the reform, it will only be possible to renew within the window of 6 months before and 6 months after the renewal date.

International Registrations

The Madrid Protocol will be implemented in Canada and trademark owners will have the opportunity to obtain trademark registrations in multiple jurisdictions or countries through a centralized process.

As of June 17, Canadian applicants will be able to extend their applications internationally and foreign applicants will be able to expand their international applications to Canada through the international registration process administered by the World Intellectual Property Organization (WIPO).

The Madrid Protocol should simplify the process and reduce the cost of obtaining international trademark registration in several countries.

Divisional Application

Divisional applications will provide the Canadian Trademark regime with much needed flexibility. Indeed, it will be possible to divide an application into two or more applications, each covering some of the goods and services of the original application. This may be particularly useful and necessary in certain circumstances, especially in the event of a problem (examiner’s report, opposition or cancellation procedure) with some of the goods and services only, so that the treatment of the non-problematic divisional application can continue. When divisional applications and the initial application become registrations, it will be possible to merge these into a single registration.

Non-Traditional Trademarks

It will now be possible to protect new types of trademarks (non-traditional), including holograms, scents, sounds, moving images, tastes, textures, and colors as such.

However, since the Trademark Office will examine the distinctive character of the marks in Canada and may require proof, it is likely that registration of these non-traditional marks will be more difficult to obtain.

Introduction of Letters of Protest

It will be possible to send a Letter of Protest to bring the attention of the Registrar concerning a potential obstacle (ex: confusion with a pending registration or application) at any time between the filing of an application and its publication.

Other modifications

Other important changes that will also come into effect on June 17, 2019 include:

• Withdrawal of the requirement to provide documentary evidence for the registration of assignments and mergers under certain circumstances

• More flexibility for correcting errors made by CIPO

• Abolishment of the concept of associated marks

• Examination of applications in terms of inherent distinctiveness

• Introduction of the concept of bad faith as a ground of opposition to an application and invalidation of a registration

As these changes will bring new opportunities and challenges, it is recommended that trademark strategies be revised to reflect future changes in Canada. If you have any questions, please contact your professional at Brouillette.

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