Motion - Discussing what matters - Episode 7: Trade-marks Act

Video | May 2019 | 2:46

Video Details

Motion - Discussing what matters - Episode 7: Trade-marks Act
1. What are the main changes for brand owners?

One of the main changes is that we’re adopting the Nice classification system. That means that all the goods and services need to be classified into the forty-five classes that make up the system. This is going to increase the overall fees at filing and at renewal because you're going to have to pay on a per class basis. So a restaurant that sells prepared foods and also promotional clothing and promotional glassware they used to be able to get a registration for four hundred and fifty dollars in government fees and now they're going to be paying six hundred and fifty dollars in government fees. So that's one of the biggest changes. Another thing is that you no longer have to use a mark in order to get it through to registration and we're also expanding the definition of what a trademark is. So things like recognizable smells, recognizable textures, recognizable colours, all of those things are now capable of being registered as trademarks and with all these changes we're bringing Canada much more into alignment with what the rest of the world is doing.

2. What is the impact of adhering to the Madrid Protocol?

Joining the Madrid protocol means that a Canadian applicant is going to be able to file a single international application that includes up to 120 countries. So it's more cost-effective way of getting global trademark protection. The filing fees are all paid up front. You're using your Canadian agent rather than going to external foreign agents. And so it's therefore a really potentially cost-effective way of actually getting your global trademark protection. It's not for everyone. If you're only operating in a couple of countries, it may not be worth the cost because it would be more expensive. And if you have issues with the validity of your parent application or your parent registration, it could topple the whole international application. So you need to talk to your trademark agent and figure out whether it's something that is going to be useful for you in terms of getting global trademark protection.

3. What should brand owners do before June 17?

First, file now to avoid substantial fee increases. Review your portfolio and figure out if there are any trademarks that you're missing or goods and services that you're missing. The next thing is consider renewing early to avoid the reclassification that you're going to have to go through and also to avoid the class fees. And third, be aware that the change in the system has created trademark trolls so people who are filing speculative applications to try and tie up marks and monitor that to make sure that no one has targeted your brand.

Welcome to Motion - Discussing what matters, a video series covering hot topics across the country where our experienced lawyers provide timely legal analysis on issues relevant to Canadians.

This episode focuses on the amendments to Canada’s Trade-marks Act that will allow the country to accede to the Madrid Protocol and Nice Agreement. These new rules will have significant consequences for Canadian brand owners as of June 17.

In this video, Vancouver-based intellectual property partner, patent agent and trademark agent Karen MacDonald explains the main changes for brand owners, the impact of Canada’s adherence to the Madrid Protocol and what brand owners should do before June 17.

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