Changes to Canadian trade mark law: what to do now

Significant changes are underway to Canadian trade mark law and practice this year with an overhaul to legislation taking effect on June 17, 2019.

Canada will accede to the Madrid Protocol, Nice Classification and Singapore Treaty, and there will be significant amendments to its Trademarks Act. These changes will impact filing, prosecution and maintenance, as well as trade mark enforcement.

Brand owners are advised to review their trade mark portfolios and protection strategy in Canada in light of these developments. In particular, there might be significant cost savings to filing or renewing marks before the changes come into force.

Changes to trade mark applications, filings and renewals

• Filing grounds will be eliminated. It will no longer be necessary to indicate if an application is being filed on proposed use, use in Canada or use and registration abroad.
• Use as a requirement for registration will be eliminated. In addition, it will no longer be necessary to file a Declaration of Use for applications filed based on proposed use in Canada – a significant change since use has been an underpinning of Canadian trade mark law. However, there will be a new requirement to demonstrate use in the first three years after registration to enforce the resulting registration in the event of infringement.
• Nice Classification will be required, accompanied by increased filing fees based on the number of classes covered. Gone will be the days of a single filing fee for as many goods and services as an applicant would like to cover.
• Registration fees will be eliminated.
• The scope of protectable marks will be expanded considerably, including a broadening of acceptable non-traditional trade marks.
• Examination for distinctiveness will be introduced.
• Corrections and assignment recordals will be simplified.
• "Associated marks" will be eliminated (along with the requirement to record changes against all "associated" marks).
• Division of applications and merger of registrations are being introduced.
• A new informal procedure is being introduced whereby third parties can submit information about prior registered marks or prior applications to the Registrar which could impact on registration of an application in the case of confusion, non-entitlement or where a registered mark appears in the specification of goods/services.
• The renewal term for trade mark protection will be shortened from 15 to 10 years (where the effective date of renewal falls after the coming into force of the new Act).

Changes to oppositions and summary expungement proceedings

• Changes range from procedural and technical to substantive.
• Changes will impact on proceedings before the Opposition Board and appeals to Federal Court.
• There are changes to the grounds of opposition and bad faith will be added as a new ground of opposition and invalidation.
• Increased powers for the Opposition Board have been proposed giving the Registrar authority to award costs and to issue confidentiality orders concerning evidence filed. Case management of proceedings is proposed to be introduced. These changes will require regulations and there is no firm date for implementation yet.
• The automatic right to file evidence on appeal to the Federal Court and the requirement for leave to file evidence on an appeal of a Registrar's decision will be removed.

Preparing for the changes

To prepare for these changes, brand owners should conduct a trade mark audit to determine:

• What marks are being used in Canada?
• With what goods and/or services?
• Are all the marks currently in use in Canada the subject of an application or registration?
• Are all the goods and/or services with which each mark is used or contemplated covered by current applications or registrations?
• How do the Canadian marks and associated goods and/or services of record compare to what is registered in the home country?

Potential action items to consider before the new law comes into effect include the following:

• File early: The removal of the requirement that marks be used before registration in the new legislation has increased trade mark trolling. Protect brands by filing early.
• File applications for new marks: The adoption of Nice Classification of goods and services will bring per-class fees resulting in higher filing costs. Therefore, consider filing new applications in Canada as soon as possible for new marks to save on government fees and secure rights against third parties. Currently, there is a single filing fee of $250 CAD regardless of the number of classes of goods/services covered. Following implementation, this fee will increase to $330 CAD for one class plus $100 for each additional class.
• Fill in gaps: To protect marks of interest, consider whether current coverage in existing applications and registrations properly reflects all marks/presentations and goods and services of interest. Fill in gaps by filing new applications to cover all important marks and goods and services. Brand owners may also wish to consider defensive filings.
• Extend coverage: Since it will no longer be necessary to have use before registration and proposed use applications will proceed to registration without the need to file Declarations of Use, consider filing to extend coverage to goods and services which might be used in future. This is of particular interest to brand owners who usually file in several classes given the government fee savings.
• Renew early: Renewing before June 17, 2019 is desirable since, until the new legislation comes into force, the government fee to renew is $350 CAD, and there is no per class fee. After that date, the fee will increase to $400 CAD for one class, plus $125 for each additional class. Since it is currently possible to renew a mark at any time during the pendency of the registration, brand owners should consider renewing registrations covering more than one class early to save on class fees. Note, however, that renewing early will not result in a 15-year term if the actual renewal date is after June 17, 2019.