The Canadian Trademark Law is set to change next month. The “coming into force” (CIF) date is 17 June 2019. The changes will be advantageous to brand owners in our view and some of the significant amendments to the law are outlined below.
Canada has joined the Nice Agreement, the Madrid Protocol and the Singapore Treaty. This is good news for businesses based outside of Canada but with a commercial interest in Canada. Canada joining the Madrid Protocol will be a particularly welcome development – businesses will be able to save time and costs because they will be able to subsequently designate Canada as a country for existing International Registrations or to include Canada as a designation for all IRs filed after the CIF date.
Both the Nice Agreement and the Singapore Treaty allow for harmonisation of trade mark classification and administration registration procedures, which should mean that formalities around these two processes will be more streamlined and predictable.
At the moment, before an application can proceed to registration in Canada, applicants need to sign a Declaration of Use. This will no longer be required after the CIF date. For those with trade marks pending at the Canadian Trademark Office at present, we have been made aware that after 17 June 2019, applications allowed prior to this date will progress directly to registration upon payment of a Government fee. This will allow businesses to receive their registration before starting to use the mark in commerce (as is the case in many other countries like the UK and EU).
On the flip side, the term of registration in Canada will be shortened from 15 years to 10 years for all applications filed from the CIF date onwards. In addition, it will be more expensive to renew multi-class marks after the CIF date (renewal fees will be charged on a per class basis). However, current Canadian trade mark owners can look to renew their registrations now (there is no need to wait until six months before the expiry date of a registration to proceed with a renewal).
In summary, we feel the changes to the Canadian Trademark Law will be welcomed by worldwide brand owners, especially those with a commercial interest in Canada. We anticipate these changes to be beneficial in terms of saving time and costs (with Canada now part of the International system), and also provide predictability and clarity from a trade mark registration formalities point of view.
If you have any questions in relation to the above or would like to discuss the changes to the Canadian Trademark Law, please do get in touch.