Canada updates its trade mark law and accedes to the Madrid System

Amendments to the Canadian Trade-marks Act initially passed in 2014, will come into force on 17 June 2019. These amendments will bring changes to the way in which national applications are treated by the Canadian Intellectual Property Office (CIPO) but will also implement Canada’s accession to the Madrid Protocol, the Singapore Treaty (which sets minimum standards for trade mark protection), and the Nice Agreement for classification of goods and services in trade marks.

Through the implementation of the Madrid Protocol, Canadian proprietors will now have the ability to file a single international trade-mark application with the WIPO designating multiple countries for protection under the Madrid system. Equally, proprietors outside Canada will be able to register their marks in Canada, as well as multiple other countries, by designating Canada in a single international application filed through WIPO.  Either way, registration costs should ultimately be lower for both Canadian and non-Canadian proprietors.

In addition to permitting Canada to join the Madrid system, the legislation also updates Canadian trade mark law to more fully harmonize with international standards as follows.

  • Declarations of Use abolished – under existing Canadian law, applicants are required to demonstrate use of a mark in order to obtain registration (by filing a declaration of use either at the time of filing or in the case where the application was based on proposed use – after the application is allowed). The new law no longer requires applicants to specify whether or not the mark has been used in Canada at the time of filing or to commence use of the mark in Canada prior to registration.

For Applications which were filed prior to the coming-in-force date (including those applications which have been allowed and have been set a deadline to file a declaration of use), registration will now be permitted upon payment of the registration fee and without the need for a declaration of use.

This change will result in significant savings relating to both filing declarations of use, and extending the deadline to do so.

Other formalities, such as certified copies of home country registrations to support “use and registration abroad” filing grounds will also not apply after the coming-into-force date.

  • Accession to Nice Classification System – in order to join the Madrid System, Canada has acceded to the Nice Agreement which establishes and maintains the Nice Classification for classifying goods (classes 1 – 34) and services (classes 35 – 45) for the purpose of registration of marks.

Under the current law, applicants are not required to classify the goods and services specified in an application, as a result, application and renewal fess are not dependent on the number of goods and services claimed (thus allowing applicants to file applications claiming many goods and services while still paying the same fee as they would for a single class). Under the new law, goods and services will need to be classified into the 45 classes of the Nice Classification system (which effectively means that applications claiming more than one class of goods and/or services, will incur higher application and renewal fees).

Further, applications filed before the coming-into-force date that do not include the Nice Classification will be suspended until appropriate class details are provided.

  • Renewal period reduced– the term of renewal of a registration will be reduced from 15 years to 10 years. Further, after 17 June 2019, a registrant will be required to update the specification of its registration to accord with the Nice Classification at the point of renewal.
  • Other important changes – these include:
  • The definition of a trade mark is broadened to include non-traditional marks.
  • Examiners will be able to object to signs that are not inherently distinctive (previously a more limited absolute grounds examination was conducted).
  • Applications may be divided (dividing an application can be helpful in overcoming objections or oppositions) after the coming-into-force date.
  • Proof of assignment will only be required if initiated by the assignee.
  • Certification marks that are not in use will be permitted after the coming-into-force date.

These significant changes are a welcome simplification of the Canadian trade mark system which should reduce formalities and costs for all trade mark proprietors who have an interest in trading in Canada.

By Modupe Animasaun