• Samantha von Sayn

An Overview of Canada’s New Trademarks Act

In June 2019, we saw some significant changes to Canada’s Trademarks Act (the “Act”). The new Act aligns Canada’s trademark laws with the United States and the European Union by adopting the following:


The Madrid Protocol: This allows applicants to receive international trademark protection by filing one single application with the World Intellectual Property Organization (WIPO).


The Singapore Treaty: This streamlines procedures by creating a maximum set of conditions that can be placed on applicants.


The Nice Agreement: To join the Singapore Treaty and the Madrid Protocol, use of the Nice Classification is required. This system organizes goods and services in 45 different classes, which are the same for all member countries.


Below is an outline of what this adaption and its consequences mean in concrete terms.


Definition


The previous Act defined certification marks as “a mark that is used for the purpose of distinguishing or so as to distinguish goods or services that are of a defined standard”, while the revised Act defines it to be a “sign or combination of signs that is used or proposed to be used for the purpose of distinguishing or so as to distinguish goods or services that are of a defined standard from those that are not of that defined standard”. Consequently, the Act now includes a new set of trademarks such as scent, colour and holograms.


Fees


The government filing fees increased from $250 for multi-class applications to $330 for the first class and $100 for additional classes. Filing fees are now charged on a per class basis.


Registration


Under the old Act, registrations were granted for a 15-year term, whereas the new Act grants registrations for ten years.


Renewal


Under section 46 of the Act, and set out in item 14 of the schedule to the Trademarks Regulations, the fees for renewals include $400 for the first class and $125 for every additional class, if submitted online through the Canadian Intellectual Property Office (CIPO) website. In any other case, the renewal fee is $500 for the first class and $125 for each additional class.


Something else to consider is that trademarks registered prior to the new Act will only be renewed if they comply with the Nice classifications.


Declaration of Use


Applicants are no longer required to file a declaration of use when requesting to register trademarks. Further, there is no requirement to show prior or actual use of the trademark. This opened the door to a significant number of new trademark applications over the past six months as applicants rushed to protect their marks against any possible future use by others.


International Registration


Canadian applicants can now file one single application to secure international registration.


Inherent Distinctiveness


Under section 37 of the Act, the Registrar may refuse trademarks which are not inherently distinctive, which is described as “the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated” and “ nothing about it refers the consumer to a multitude of sources”.


Error Correction


Previously, only the Federal Court could apply corrections, with the applicant bearing the expenses incurred by court proceedings. The new Act now permits the Registrar to correct errors in registrations.


Dividing and Merging Registrations


Trademark applications may be divided by a divisional application that contains goods or services. This can be done at any stage of the process and is useful in circumstances where a confusion objections is raised regarding certain goods or services. The applicant may choose to divide the application to allow the initial application to proceed and may merge the registrations again down the road.


Please note that the list above is not a comprehensive list, but only an overview to highlight some of the changes.

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