Major changes brewing for the Canadian Trade Mark System – by Shu-Yen Lee

In recent years, Canada announced that they would accede to the Singapore treaty, the Madrid Protocol and the Nice Agreement. After months of fine-tuning requirements, legislation was introduced in 2014 and 2018 to amend the Trademarks Act and with the new Trademark Regulations published in November 2019, the date of 17 June 2019 was announced to enter into force the new provisions of the Trademarks Act.

The most significant changes include:

  • Extension of the definition of a trade mark to include that a trade mark can be a colour, hologram, moving image, sound, scent or texture.

  • Removal of the requirement of a filing basis which was previously defined as use or proposed use in Canada or application/registration and use in the applicant’s country of origin.

  • Formal adoption of the Nice classification for goods and services, and filing fees which are payable based on the number of classes (currently only one fee for all classes)

  • Ability to reject a trademark application on the basis that the mark is not inherent distinctive (this comes into alignment with similar basis of objection in other countries, such as Australia)

  • Ability to file divisional applications

  • Foreign filers can designate Canada as an extension for their International Application.

  • Term of registration will reduce from 15 years to 10 years.

What does this mean for trade mark holders in Australia?

From 19 June 2019, the most important change for Australians is the ability to designate Canada as an extension to their Madrid application. Previously Australians had to file their trade mark application directly into Canada.

Unfortunately, as the fees will be payable on the basis of the number of classes, the government fees for filing in Canada will be higher, especially for multi-class applications.

Lastly, trade mark owners should review their trade mark portfolios for upcoming renewal dates. Time the payment of the renewal fees before the new provisions come into force for an extension of term of 15 years. Payment after 19 June 2019 will renew the trade mark registration of a lesser term of 10 years.

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