Upcoming changes to Canada’s trade mark law
On 17 June 2019, Canadian trade mark law will undergo significant changes.
In addition to Canada becoming designatable under the Madrid Protocol, another major change will be the adoption of the Nice Classification – an international classification of goods and services applied to the registration of trade marks.
Canada does not currently have a mandatory classification system, which means that the government fee to apply for or renew a trade mark registration is the same whether the trade mark relates to goods or services which would otherwise fall within one class or all 45 classes. However, when the law changes there will be a new fee-per-class structure implemented (consistent with the rest of the world).
As a result of the changes, the official government fees for multi-class trade mark filings and renewals will increase significantly.
Under the current law, any Canadian trade mark registration can be renewed prior to 17 June 2019, regardless of the renewal deadline. This could mean significant cost savings for trade mark owners renewing their registrations before the new law is in force.
After the changes take effect, trade marks due for renewal must be classified into the 45 goods and services classes. In addition, the term for registration and renewal will change from 15 years to 10 years, to bring Canada in line with most other jurisdictions.
Currently, Canadian trade mark applications need not specify goods or services classes. Rather, applications are broadly specified as covering ‘wares’ (goods) and/or ‘services’. From 17 June 2019, all new Canadian trade mark applications must specify goods and services in accordance with the Nice Classification. That is, items must be grouped into one or more of the 45 available classes of goods and services. Any trade mark applications which have not been accepted for registration before 17 June 2019 will also need to be specified in accordance with the Nice Classification.
From 17 June 2019, Canada may also be designated as part of a Madrid application. Our Trade Marks team can provide advice as to whether it will be more efficient to designate Canada via Madrid, or to file a national Canadian application directly, depending on the relevant circumstances.
Trade mark filing requirements are also set to change, with applications no longer needing to identify a date of first use. Details of use and registration of the mark abroad will also no longer be required and a “Declaration of Use” will no longer be needed to support registration. This will apply to all new applications as well as applications which remain pending as at 17 June 2019.
Other notable changes
There are a number of other changes that will come into force from 17 June 2019, which will largely bring the Canadian trade marks system in line with other jurisdictions around the world. These changes include the ability for trade mark applicants to seek protection of “non-traditional” trade marks (such as sounds, smells, textures and colours), and for the filing of divisional applications. A new ground of opposition will also be introduced, similar to the distinctiveness objection which may be raised in Australia.
Steps you should take next
If you are considering a new Canadian trade mark application, we recommend that you provide us with instructions well before 17 June 2019, particularly if you would like to file in two or more classes.
If you have an existing registration in Canada, we recommend that you consider the scope of the registration to see if additional goods or services should be protected. If so, new applications should be filed before 17 June 2019, to cover those goods or services.
Finally, if you have any Canadian trade marks due for renewal shortly after 17 June 2019, you may wish to consider seeking renewal now in order to reduce renewal costs.
If you have any questions about the impact these changes will have on your IP rights, please contact a member of our Trade Marks team.