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

Video | June 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 are the pros and cons of removing the use requirement?

The pros are that it’s going to be a more streamlined and efficient process. No more declarations of use are required. The other pro is that you're going to be able to get a registration through when you're potentially still in just the development and marketing stages as long as you have a bona fide intention to use a trademark. The cons are that by not having first use dates it's going to make clearance more difficult because you don't know who has priority and we expect an increase in oppositions for that same reason. Also because of speculative filing like the trademark trolls you're going to end up with more cancellation proceedings to remove non-used marks from the register.

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 came into force on June 17 and the country’s accession to the Madrid Protocol and Nice Agreement. These new rules have significant consequences for Canadian brand owners.

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 the pros and cons of eliminating the use requirement as a condition to trademark registration.

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