Signed, sealed and almost delivered: new trademark law in sight

Introduction

Canada is finally completing the last steps necessary to implement its new trademark law. The changes will be the most significant in 50 years – both procedurally and substantively.

The process has been a slow one. While Canada's new trademark law was finalised in 2014, it has yet to come into force. Before it can be implemented, the Trademarks Office and the government must achieve two milestones:

first, the government must finalise new trademarks regulations;

second, the Trademarks Office's IT system must be modified to accommodate the changes to the law.

Milestones

The first milestone will be achieved in 2018, having started with the release of the final draft of the 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 regulations, except where there may be errors or omissions or areas of widespread concern. The regulations will then be amended as appropriate and, according to the Trademarks Office's projections, are expected to be officially published in their final form in October 2018.

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 before Autumn 2018.

Key changes

Key changes to the trademark law and their impact are as follows.

Simplified trademark applications Trademark applications will be simplified, as applications will no longer need to identify a date of first use. Details of the use and registration of a mark abroad will also no longer be required.

While this will generally result in a faster and cheaper 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.

Expanded definition of 'trademark' 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:

words;

personal names;

designs;

letters;

numerals;

colours;

figurative elements;

three-dimensional shapes;

holograms;

moving images;

modes of packaging goods;

sounds;

scents;

tastes;

textures; and

the positioning of signs.

Other changes Other key changes are as follows:

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 registration term 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. For example:

the trademark application filing fee will be C$330 for the first class plus C$100 for each additional class instead of the existing C$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; and

the registration renewal fee will be C$400 for the first class plus C$125 for each additional class instead of the existing fee of C$350 regardless of the number of classes.

Comment

The government accepted comments concerning the draft Trademarks Regulations until March 11 2018.