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New Canadian Trademarks Law

The new Canadian Trademarks Act and Rules come into force in Canada on June 17, 2019.  The following is a highlight of changes in the law coming into force (CIF).

  1. The filing basis for applications has been eliminated. Accordingly there is no longer the need to specify the basis for filing of: a) a date of first use, b) intent to use, or c) on a foreign application/registration with use abroad. We believe the absence of this requirement at the time of filing may lead to more applications being filed by trademark trolls.  Further, any application that is filed prior to the CIF date on the basis of intent to use, including allowed application with the deadline to file a declaration of use, will proceed to registration upon the payment of the government registration fee and the requirement of filing a declaration of use is waived.
  2. The NICE protocol will be implemented on the CIF date and all goods and services will now be classified according to this international classification system. Applications filed before the CIF date that do not include acceptable NICE classification will be suspended until proper classes are added.
  3. The Madrid protocol also comes into force on the CIF date.
  4. A claim to priority may be made from any prior trademark application thereby eliminating the current requirement that only the trademark application filed in the applicant’s country of origin can be relied upon for priority.
  5. The renewal term of a trademark registration is reduced from 15 years to 10 years. The renewal fee is calculated based on the number of classes with a $400 fee for the first class and $125 for each additional class. It should be noted that the trademarks office is encouraging registrants to voluntary classify their registrations at this time as this will simplify the renewal later on. Also after the CIF date the registrar may request classification of a registration and failure to do so in a timely manner may result in loss the registration.
  6. The application government filing fees will also be based on classification. There will be a $330 charge for the first class and $100 payable for each additional class for applications filed online. Please note the current government filing fee is $250 for all goods and services listed in the application and classes claimed. Accordingly, you may wish to file your application prior to the CIF date to reduce the filing costs.
  7. A change in ownership or transfer of a trademark have been relaxed and no longer requires documentary proof.
  8. With the elimination of the use requirement in the filing of an application or during its pendency to obtain a registration, a new grounds of opposition has been added that the application was not filed in good faith. We expect that with the elimination of the use requirement, more applications will be subject to opposition proceedings and the good faith grounds will be relied upon.
  9. The definition of a trademark has been changed for what can be registered. An application can be filed for signs such as colour alone, scent, taste and texture. The trademarks office will now be able to examine these non-traditional marks on the basis of distinctiveness which may make it difficult to register these types of marks.
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