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Amendments to Trade-marks Act coming into force June 17

Originally published in

With significant changes on the horizon for Canada’s Trade-marks Act, Toronto intellectual property lawyer John Simpson says there are key developments that will modernize and disrupt the nation’s trademarks regime.

“There are a number of changes coming, and we’re going to be making recommendations and providing advice to our clients,” says Simpson, principal of IP and new media law boutique Shift Law. “Some of the amendments may mean filing applications now rather than waiting until after they come into force, but in other cases, it may make sense to wait.”

The long-awaited reforms come into effect on June 17, 2019, and Simpson tells that it will bring Canada in line with other countries.

“A big development is Canada’s entry into the Madrid Protocol — a multi-jurisdictional filing system for obtaining trademark protection in other countries using one application,” he says. “It may mean international trademark applicants will no longer have to hire Canadian lawyers to do their applications for Canada since they can submit one under the Madrid system in their home country.

“That said, there are some disadvantages to doing it that way, and I expect that with an increased number of applications in Canada through this system, it will lead to a different type of work for practitioners, such as trademark oppositions,” Simpson says.

Another change that brings Canada in line with other jurisdictions is the introduction of the Nice Classification system.

“This divides all imaginable goods and services into about 45 classes,” Simpson says.

While this international classification of goods and services is already mandatory in most other jurisdictions, up until now, its use in Canada has been voluntary since 2015.

The mandatory classification system also brings an increased cost in trademark applications, Simpson says.

“Currently, when you file a trademark application, you pay the government $250 — regardless of how many goods and services you include. You could have an application for everything under the sun, and it’s still going to be a flat fee,” Simpson says.

“After June 17, an applicant will be charged depending on how many classes there are,” he says. “The fee will be $330 for the first classification of goods and service and $100 for each additional class.”

Another change that may require some strategic thinking is the term of registration will now be 10 years instead of the current 15, Simpson says.

“That may be a good reason to renew an existing registration now instead of waiting until after June,” he says.

There is also an amendment to allow applicants to notify the Canadian Intellectual Property Office (CIPO) of their pre-existing rights before an application gets to the opposition stage. Simpson says this is significant because it will provide trademark owners more of an incentive to police the use of their marks.

“Right now, you file an application, and if it gets approved by CIPO, it’s then advertised in the Trade-marks Journal. Lawyers around the country read this and advise their clients accordingly. If, for example, a client was using a mark before an applicant but didn’t register it, I could oppose the application, but that’s a very expensive process, and there’s no opportunity to let CIPO know about prior rights,” he says.

“Now, I can write a letter to the office about a pending application and show some evidence of prior use and, at the examination stage, CIPO can take that into consideration,” Simpson notes.

Since Bill-C86 was first tabled, he says IP practitioners expressed concerns with some of the original amendments, in particular, the removal of the use requirement.

“The removal of the requirement to have used a trademark in order to get a registration raised many concerns among trademark lawyers. The government started to take notice and have now proposed an amendment to the amendment — basically, you can have a registration, but after three years you can’t enforce it if you’re not using it,” Simpson says.

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