Signed, sealed and almost delivered - new trademark law is in sight
- Last steps necessary for implementing new trademark law are being completed
- Final draft Trademarks Regulations were released on February 10 2018
- It will be possible to divide applications, which will be of strategic assistance during prosecution and in some oppositions
Canada is finally completing the last steps necessary for implementing its new trademark law. The changes will be the most significant in 50 years – both procedurally and substantively.
The process has been slow. Very, very slow. While Canada’s new Trademarks Act was finalised in 2014, it is not yet in force. Before it can be implemented, the Trademarks Office and the Canadian government must achieve two milestones. First, new Trademarks Regulations must be finalised by the government. Second, the Trademarks Office information technology (IT) system must be modified to accommodate the changes to the law.
The first milestone will be achieved this calendar year, having started with the release of the final draft Trademarks Regulations on February 10 2018. Although there is a 30-day consultation period, the Trademarks Office is unlikely to consider any significant changes to the draft Trademarks Regulations, except for cases where there may be errors or omissions or areas of widespread concern. The regulations will then be amended as appropriate and are expected to be officially published in their final form in October according to current projections by the Trademarks Office.
Assuming that the publication process proceeds as planned and that the IT system is upgraded according to schedule, the Trademarks Office anticipates that the new trademark law will be in force by early 2019. However, the exact date is unlikely to be determined prior to the fall of 2018.
Some of the more important changes to Canada’s trademark law and their impact include the following:
- Trademark applications will be simplified, since applications will no longer need to identify a date of first use. Details of use and registration of the mark abroad will also no longer be required. While this will generally result in a faster and less expensive process, it also opens the door to trolls and squatters. Contentious proceedings such as oppositions, litigation and non-use cancellation proceedings are therefore expected to increase significantly. As a result, suitable trademark monitoring should be considered.
- The definition of a 'trademark' will be greatly expanded to cover anything that functions as an indicator of source and will include any “sign or combination of signs” that serve that purpose. As a result, protection will be available for traditional and non-traditional marks including 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.
- It will finally be possible to divide applications in Canada, which will be of strategic assistance during prosecution and in some oppositions.
- A declaration of use will no longer be required. This will apply to all pending applications.
- The term of registration will be reduced from 15 to 10 years.
- Canada will become a member of the Madrid Protocol.
- Third-party correspondence (ie, letters of protest) will be permitted during prosecution.
- The government registration fee will be eliminated.
- The Nice Classification of goods and services will be adopted.
- Consistent with the rest of the world, fees per class will be introduced. Examples include:
- The trademark application filing fee will be $330 for the first class plus $100 for each additional class, instead of the current $250 filing fee regardless of the number of classes. Multiclass applications should therefore be filed without delay to avoid this significant fee increase for multiclass applications.
- The registration renewal fee will be $400 for the first class plus $125 for each additional class, instead of the current fee of $350 regardless of the number of classes.
The government is accepting comments concerning the draft Trademarks Regulations until March 11 2018.
Philip Lapin, Smart & Biggar/Fetherstonhaugh, Ottawa
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