100 Day Countdown to Canada’s New Trademarks Regime: A Brand-owners’ Guide

We are nearly 100 days away from the June 17, 2019 coming-into-force (or “CIF”) date for the significant amendments to Canada’s Trademarks Act. The amendments are primarily designed to ratify and implement three major international treaties regarding trademarks, specifically, the Madrid Protocol, the Nice Agreement, and the Singapore Treaty. We highlight the key amendments to the Trademarks Act, including tips and steps that brand-owners across sectors can take to protect their trademark portfolios and minimize costs.

KEY AMENDMENTS

1. Various types of marks: Additional non-traditional marks, such as holograms, scents, tastes, textures, and moving images will be eligible for trademark protection. However, the Trademarks Office can require an applicant to furnish proof of distinctiveness of these marks, which likely means that obtaining a registration for these marks will be more difficult compared to the typical word marks or design marks.
2. Use not required: While use will remain the foundation of trademark law in Canada (e.g. priority will be based on first use), applicants will be able to obtain a registration for a mark without having used it. Applications will no longer need to specify a date of first use and declarations of use will no longer be requested for proposed use applications.
3. Nice Classification of goods and services: All statements of goods and services will have to be classified based on the system provided by the Nice Agreement.  Existing registrations will need to be amended to comply with the Nice Agreement in order to be renewed. At Shift Law, we have been proactively drafting trademark applications to comply with the Nice Agreement for many months.
4. Fees based on Nice classification: The current government “stage-based” fee of $250 at the application stage and $200 at the registration stage will be replaced after the CIF date by fees structured based on the number of classes of goods and services under the Nice classification system. The government fee for the entire process will be $330 for the first class of goods or services and $100 for each additional class of goods or services. These fees are due at filing and there is no fee later at registration. At renewal, the current government fee is $350 for all registrations regardless of the number of Nice classes. After the CIF date, the renewal fee will be $400 for the first Nice class and $125 for each additional Nice class.
5. Ten-year registration term: Registrations issued or renewed on or after the CIF date will have a term of ten years before requiring renewal. Registrations issued or renewed before the CIF date will continue to have a term of fifteen years before requiring renewal.
6. Notifying the Trademarks Office of third-party rights during examination: Currently, the Trademarks Office does not consider any third-party correspondence related to an application under examination. After the CIF date, third parties can notify the Trademarks Office of prior trademark rights alleging that (i) the application under examination would be confusing with a registered trademark, (ii) the applicant is not the person entitled to register the trademark due to confusion with a prior filed application and/or (iii) registered trademark(s) are being used to describe the goods and services in the application under examination. A list of the relevant registrations and/or pending applications should be provided. However, the Trademarks Office will not accept or consider any other evidence or written arguments.
7. Dividing applications to expedite registration of uncontested goods and services: Applicants will be able to divide goods and services in their application, which would create two (or more, if subsequent divisional requests are filed) independent applications. This is a useful strategy to consider when an examiner raises a confusion or descriptiveness objection or when a party files an opposition to the mark, as these are often constrained to a subset of the goods and services in an application. A divisional application that proceeds to registration can then be merged with other registrations for the same trademark that stem from the same original application.
8. Efficient multi-jurisdictional filing: Through the Madrid Protocol, applicants will be able to file a trademark before the Trademarks Office of a Madrid Protocol-acceding jurisdiction, such as in Canada, and then forward the application to the World Intellectual Property Organization (WIPO) for filing in any Madrid Protocol-acceding jurisdictions of their choosing after paying the prescribed fees for each jurisdiction. This will initiate filings in these individual jurisdictions. Prosecution of the trademark applications will still be subject to the laws, rules, practices, policies, and procedures of these respective Trademarks Offices.

RECOMMENDATIONS AND ACTION ITEMS

With these significant amendments to Canada’s trademarks regime in mind, we strongly recommend that brand-owners discuss with us how some or all of the marks in their trademark portfolio would benefit from acting quickly before the CIF date under the current trademarks regime. Others may benefit from acting after the CIF date under the new regime. 

We also recommend that brand-owners:

1. Consider filing trademark applications for key marks in your business prior to the CIF date to secure the current lower government filing fees since the new fees will be higher for applications with three or more Nice classes of goods and services. However, the new government fees will be lower for applications with one or two Nice classes of goods and services, as the fees will be $330 and $430, respectively, as opposed to the current total $450 government fee. Brand-owners often use or intend to use their marks in association with a wide range of goods and services that are outside the “core” of their business and fall under many different Nice classes. For instance, in addition to selling beer, a brewery may rent out venue space, provide tours, host a pub selling food and beverages, and sell branded glassware. Before the CIF date, the government filing fee for an application with ten (or any number of) Nice classes is $250. After this date, the government filing fee for the same application will be $1230. Brand-owners would be well-advised to take stock of the key brands and marks that they use or plan to use in their business. We can also conduct an intellectual property audit to identify brands and marks that would benefit from registration. With this information in hand, we can devise and implement an effective trademark strategy that prioritizes marks that would benefit from filing prior to the CIF date.
2. Declarations of use should generally be made before the CIF date. For marks that have been used in association with all of the goods and services in a proposed use application, consider providing instructions for us to declare use on your behalf before the CIF date in order to benefit from the fifteen-year registration period.
3. If fewer than all of the goods and services in an application have been used in association with a mark, then generally, instead of deleting the not-yet-used goods and services from the application, consider providing instructions for us to seek extensions of time until after the CIF date in order to obtain a registration without being required to declare use. The foregoing is subject to many other fact-specific considerations, such as obtaining a registration as soon as possible to support a trademark infringement action, regarding which brand-owners should seek advice from us.
4. Consider providing instructions for us to monitor trademark applications filed in Canada that may be confusing with your trademark applications or registrations or otherwise conflict with your prior trademark rights. This will enable us to provide critical information to the Trademarks Office in an effective and timely manner, so that such information will be considered during the examination stage of the relevant application. This new procedure of third-party notifications enables brand-owners to initiate their brand protection strategies earlier on instead of having to wait for a concerning trademark application to be advertised for opposition.
5. Divisional applications add yet another tool to trademark prosecution strategy. Applications that are currently the subject of a confusion or descriptiveness objection may benefit from deferring responses to office actions until after the CIF date when divisional applications will become available. Similarly, applications that are the subject of a proposed or actual opposition may benefit from seeking extensions of time to take required steps in the opposition until after the CIF date. Consider speaking with us about how your trademark applications may benefit from requests to divide.

As we are now nearly 100 days until the CIF date, which marks the implementation of Canada’s new trademarks regime, we strongly recommend that brand-owners discuss with us how we can devise and execute an effective brand strategy that optimizes protection of their marks.

Be sure to check out our upcoming follow-up article where we will discuss further details regarding Canada’s accession to the Madrid Protocol and implications for brand-owners.