A new Trade-mark Act puts Canada in line with International Intellectual Property Treaties

Canada officially moved toward amending its Trade-marks Act and, in early 2019, will join multiple international agreements including the Nice Agreement concerning the Classification of Goods and Services, the Singapore Treaty of the Law of Trademarks, and the Madrid Protocol concerning the International Registrations of marks. All of which has been recently announced by the Director General at the Trademarks Branch of the Canadian Intellectual Property Office. Canada’s membership in these treaties represents real benefits for Canada as it will “reduce [the] administrative burden,” “align with international best practices,” and consequently attract foreign businesses. Regarding the Trademark applications, the registration process will be faster overall. Once Canada joins this International Trademark System, along with the one hundred and seventeen (117) other countries who are already part of the World Intellectual Property Organization (WIPO), applicants will be able to register their Trademark in multiple countries through a single application. According to the Canadian Intellectual Property Office, the process for registering a Trademark will be “faster, simpler and less expensive.” Trademark owners should take advantage of this new opportunity as soon as it is implemented.

As far as Canada’s domestic law, the main changes for the registration of a mark will be changes to its fundamental requirement of “use” for registration, which will be removed under the new Trade-marks Act. Other changes will include what constitutes the use of a mark for goodwill in the marketplace as well as the reputation of the mark, which can be proven during the process rather than prior to the Trademark application. Furthermore, the definition of Trademark will expand to include tastes, sounds, smells and other identifiers. More so, fee structures and registration terms will change. While fees will increase from C$250 to C$330 for one class and C$100 for additional classes, the application for a renewal term will be shortened from fifteen (15) years to ten (10) years. There will also be a new system for examining marks, as well as additional grounds for opposition of a Mark. All these changes are being implemented to align the protection of Intellectual Property Rights within Canada with international practices and WIPO Members States for Trademark registration.

Regardless, Canada will most-likely experience an increase in filings of Trademark applications and, consequently, a major change in its Trademark landscape. Nonetheless, the globalization of intellectual property continues and applicants are having greater opportunities to file their trademark more broadly and further extending the protection of their Mark.

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