June 17, 2019 is the big day – a day anticipated since 2014. The major changes to the Canadian Trademarks Act will be implemented on this day. What does this mean for trademark owners?
These changes will affect the types of trademarks which are protectable, the basis for registration, the procedures for filing trademarks, the opposition procedures and the manner of enforcement. In addition, as of June 17, 2019, Canada will accede to the Madrid Protocol and the Nice Agreement. This Part I will deal with some of these changes.
One major change is that Canadian trademark applications will not include any use basis for obtaining registration. All current bases, including actual use in Canada and proposed use in Canada, will be eliminated. Of course, Applicants who use their marks or intend to use their marks in Canada may file applications, as may anyone else. It will not be necessary to file any certified copy of any foreign registration (re: registration abroad) to support the application.
The definition of a trademark will be changed to:
(a) A sign or combination of signs that is used or proposed to be used by a person for the purpose of distinguishing or so as to distinguish their goods or services from those of others.
“sign” includes a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packing goods, a sound, a scent, a taste, a texture and the positioning of a sign.
The definition of “sign” is broad enough to protect some interesting marks. It includes color on its own, scent, taste, texture and other non-traditional trademarks.
Examination will include distinctiveness. The Trademarks Office Examiner will be able to require proof of distinctiveness. This may prove to be an issue with these newly protectable non-traditional marks but, even, for marks that would have been registrable before the changes. As well, Section 14 of the Act will be repealed, meaning that Applicants will not be able to rely on their foreign use and registration of their marks to obtain registration.
Currently, applications which are based on proposed use in Canada cannot move to registration unless a declaration of use is filed before registration. In that declaration, the Applicant or a representative of the Applicant must declare that since the filing of the application, use of the trade-mark in Canada has been commenced by the Applicant itself and/or through its licensees in association with the goods and services. After June 17, 2019, actual use will not have to alleged and no declaration of use in respect of proposed use applications will have to be filed.
Currently pending applications based on proposed use for which use will not have been commenced by June 17, 2019 can be registered after June 17, 2019 without any requirement to declare use. Therefore, no proposed use application or any goods or services therein should be abandoned before June 17, 2019, if the Applicant wants registration for that mark and those goods and services.
As to goods and services and as mentioned above, Canada will accede to the Nice Agreement. Currently, applications can be filed setting out the International Classes and in examination, the examiner will comment on the Classes. As of June 17, 2019, all applications must set out appropriate International Classes in order to advance.
Currently, the government filing fee for one trademark application is $250.00 CAD, regardless of the number of goods and services (i. e. Classes). As of June 17, 2019, the government filing fee for one trademark application for one International Class will be $330.00 CAD and $100.00 CAD for each additional class (for applications filed online).
Applicants should file multi-class applications for any marks they wish to protect before June 17, 2019 in order to save money on the government filing fees. Many Applicants are doing just that.
Part II will cover other changes and their consequences for Applicants and the protection of marks in Canada. These major changes can be used to the best advantage of Applicants.