Starting June 17, 2019, the Canada Trade-marks Act will get a significant makeover that will impact the intellectual property assets of every startup, entrepreneur, and small business in BC.

These amendments aim to streamline the Canadian trademark process and improve system infrastructure, to better align with international trademark law and standards.

Whether your business currently owns a registered trademark, or is planning to register one in the near future, understanding the effects of these changes will be critical to protecting your brand domestically and internationally.

Simplified Application Process for International Trademark Registrations

With the adoption of the Madrid Protocol, Canadians will be able to file for trademark protection in 120 countries around the world with a single application and one set of fees. This allows Canadian businesses with international expansion plans to do so faster and more cost-effectively.

Under previous legislation , you must file separate applications and pay fees to each country where you want your trademark protected.

This is significant cost savings!

Before you can apply for an international trademark, you will need to have a Canada trademark application in progress or currently own a registered Canadian trademark.

Removal of the “Use” Requirement

The revised trademark legislation will no longer require applicants to indicate a date of first use in Canada.

To a greater extent, the updated legislation will also eliminate the necessity to file a declaration of use as a prerequisite to proceed with registration.

What this means is that anyone is allowed to apply for a trademark, whether they intend to use it or not.

Removal of this barrier to entry will unquestionably lead to a greater influx of registrations, trademark squatting, and potential litigation cases across various industries.

Nice Classification of Goods and Services Requirement

All new applications will be obligated to adhere to the Nice Classification system, which is an international classification system that categorizes goods and services for the purpose or registering trademarks.

Enforcing mandatory classification of goods and services will enable both faster trademark registration and renewal processes.

Increases in Government Filing Fees

Government filing and registration fee structures will be affected due to the implementation of the Nice Classification system.

The changes are as follows:

	Official fees for all applications filed before June 17, 2019:	Official fees for all applications filed on or after June 17, 2019:
Online Filing to CIPO	$250CDN flat fee with no limit to the number of classes	$330CDN for the first class and $100CDN per additional class as of the filing date
Paper Filing to CIPO	$250CDN flat fee with no limit to the number of classes	$430CDN for the first class and $100CDN per additional class as of the filing date
Registration	$200CDN flat fee with no limit to the number of classes	No fees

Types of Registrable Trademarks Expanded

Prior to amendment changes, only traditional marks were eligible for trademark protection, which included:

• Word marks
  • Company names
  • Domain names
  • Slogans
  • Product/service line names
• Design marks
  • Logos
  • Graphic designs
  • Images

Under the new amendments, the following non-traditional forms of marks will be eligible for registration in Canada.

• Colours
• Holograms
• Animated images
• Scents
• Tastes
• Textures/patterns

In order to qualify for registration, however, these non-traditional signs will undergo strict examination by the Canadian Intellectual Property Office (CIPO) for their “distinctiveness” at the time of use. The distinctiveness element is covered in greater detail in the next section.

Applications Will Be Examined For “Distinctiveness”

The CIPO will examine new and pending applications to determine if the proposed mark contains unique characteristics that sets it apart from other registered or pending trademarks.

In previous legislation, applications were not subject to examination for distinctiveness. Distinctiveness may only be raised as a ground of opposition initiated by a third party.

The Registrar of Trademarks will have the authority to request evidence of distinctiveness as of the filing date for any application the Registrar does not view as inherently distinctive.

At the time of writing, information about the requirements for measuring distinctiveness is currently not available. This information will be updated once the criteria is made public.

Priority Claims Not Only Applicable to Country of Origin

The enactment of the new legislation will allow applicants to claim priority on any application filed in any country that is a member of the Paris Convention, and not restricted solely to the applicant’s “country of origin”.

Increased Flexibility to Amend and Edit Applications and Registrations

With the new changes to the Canada Trade-marks Act, applicants will be provided greater flexibility during the trademark process.

Correct errors made in pending applications

Applicants will have more options to amend their application prior to registration if they run into issues.

Divide and merge applications

In the event that there are objections to some, but not all goods and services, you are able to split your applications and allow unopposed goods and services to move forward in the process.

If any of your divided applications results in registration, the registrations can be merged together.

Reduced Renewal Terms With Increased Fees

Trademark renewal terms are lowered from 15-year terms to 10-year terms.

If your registration was issued before June 17, 2019, your 15-year renewal term will remain in force and reduced to 10 years at the time of the next renewal.

This will require brand owners to be more diligent with renewals to ensure that their trademark is always protected.

In addition to the shorter renewal terms, official government fees have also changed.

As of June 17, 2019, it will cost $400CDN to renew the first class of goods and services and $125CDN per additional class.

A couple of other amendments regarding renewals:

• Payments for renewals fees may be made within 6 months in advance of the renewal deadline.
• Trademark registrations are required to be fully compliant to the Nice Classification system before renewals are granted.

Recordal for Mergers and Assignments of Associated Marks Eliminated

The CIPO will no longer require brand owners with portfolios of associated marks to provide evidence or document mergers or assignments, as provisions regarding associated marks will be removed.

Recommendations for Business Owners

If you are a current trademark owner or thinking about registering a Canadian trademark, conduct a full audit your business’s intellectual property assets and evaluate whether it makes sense to secure your brand now or after amendments are enacted.

A few factors to take into consideration before making a decision:

• Filing new trademark registrations now to avoid increased per-class fees
• If you intend on doing business outside of Canada, consider filing international trademarks for global protection
• Trademark owners with multi-class registrations should renew their registrations before the renewal fee increases.

Disclaimer: Any information published by Patrola Law is not legal advice and is not intended to address the circumstances of any particular individual or entity. Patrola Law recommends seeking professional legal counsel for your unique business situation.