Final countdown to significant Canadian trademark law changes

In the media June 2019

This article was originally published by The Lawyer’s Daily, part of LexisNexis Canada Inc.

On June 17, 2019, the most significant changes to Canada’s trademark law in over 50 years will be implemented.

The upcoming amendments will introduce substantial changes to the Canadian trademark landscape that are designed to streamline the application process and bring Canada more in line with trademark law internationally.

The changes will also allow Canadian business to take advantage of the international application process already in place for 120 countries worldwide — this latter change will be discussed further in a subsequent article.

Key changes

For Canadian businesses, one of the most significant changes will be adherence to the Nice Classification, which requires all goods and services to be classified into one of 45 internationally defined “classes.” Classification will be done at filing for new applications, and the Trademarks Office will examine all applications for appropriate classification.

For all existing registrations, goods will need to be reclassified upon renewal — also subject to examination — which in some cases many be a significant endeavour when dealing with voluminous goods and services. Fees will increase both at filing and renewal for marks covering multi-classes.
Another significant change is that the definition of a registrable trademark will be expanded to include a list of non-traditional marks. Indicia such as colour, taste, odour, holograms and the location of a mark, among others, are now included within the definition of a trademark and may be protected if distinctive to a trader.

Businesses will be able to — and should — think outside the box as to the trading indicia that they are using to identify themselves to consumers and consider whether they may now be able to obtain formal trademark protection for such non-traditional indicia.

The application process will also be streamlined for applicants, and businesses will no longer need to use a mark prior to obtaining a registration. However, Canada still remains a “use” based system: priority will go to a prior user of a mark, and registrations can only be maintained and enforced if the trademark is ultimately used in Canada.

Additional changes provide for the ability to divide and merge applications, which will allow businesses to deal with objections from the Trademarks Office and third parties that may relate to only some goods or services while still moving forward with non-objectionable goods and services. The term of a registration will also be reduced from 15 years to 10 years.

Additional fees

Businesses with goods and services in more than one class will see an increase in fees, sometimes significantly, both at filing and renewal:

  • Currently $250, government fees for an application filed online and covering a single class will be increased to $330, with fees of $100 for each additional class.
  • Currently $350, government renewal fees for a renewal covering a single class will increase to $400, with fees of $125 for each additional class.  As the renewal term will be reduced to 10 years, these fees will also need to be paid more regularly.

Impact on broader scheme

Under the old trademark regime, users were required to use a mark prior to registration and to provide a first use date where the mark was used prior to filing.

Removing the “use” requirement has led to an increase in speculative filings, including by “trademark trolls” looking to obtain broad trademark registrations and then license or sell those registrations to legitimate businesses.

Over 500 “troll” filings covering all 45 classes have been filed in Canada since 2014, plus more covering 40-plus classes.

With an increase in this type of speculative filings and lack of information relating to the “use” that still defines priority in Canada, trademark lawyers are anticipating an increase in oppositions, litigation and non-use cancellation proceedings. So while the application process has been streamlined, some businesses may find themselves embroiled in more back-end proceedings to protect their trademark rights.

Preparing for change

With the June 17 implementation deadline rapidly approaching (and the electronic services of the Canadian Trademark Office going offline on June 13), brand owners should take this opportunity to plan for new opportunities while they can still benefit from the current fee schedule.

Businesses should review their trademark portfolios and consider if there are any multi-class applications that they want to file now, so as to avoid new class fees.

Businesses should also review their registered marks and see if there are multi-class registrations that can be renewed now before the new fees per class come into effect — any existing registration can currently be renewed, even if not due for renewal until well into the future.  

While early renewal can be cost effective, it will however not impact the registration term, which will still shorten to 10 years if the renewal date was set after June 17.

Finally, to guard against trolls, businesses should also consider defensive trademark filings and generally be alive to the potential issue and monitor the Canadian Trademark Register for speculative filings affecting their branding strategies.