Canada’s June 2019 Trademark Law Changes – “Use” is No Longer Required and Other Highlights

By Josh Gerben, Esq.

Canada’s longstanding trademark laws are about to change. On June 17, 2019, Canadian trademark owners and applicants will see differences in how trademarks are approved, the cost to file, and the international application process, among other changes. The largest change to Canada’s trademark laws in recent history will better align with global trademark requirements and processes. Here’s what you need to know and how you could be impacted.

“Use” is No Longer Required to Obtain Registration

This is the single biggest change to come from Canada’s Trademark Act. Under current law, those filing for a Canadian trademark registration declare that they have actual use of the trademark in Canada before the registration can issue. Beginning in June 2019, demonstration or declaration of use will no longer be required to get a registration to issue.  With that said, the owner of a registration that never ends up using the mark could still be subject to a non-use cancellation proceeding in the future.

The intent of the law is to simplify the application process, but it could also usher in some additional legal issues, harmful to businesses. Because applicants will no longer need to show proof of use when filing, squatters and others with ill intent may begin the process of registering brands in Canada that do not belong to them. Squatters do this so that they can essentially ransom the marks to their brand owners once they seek to register in Canada. Others may wish to profit off the distribution of goods with another’s mark displayed. Protecting your trademarks against squatters and infringers is vital to the success of your business. If you have not yet registered your trademark in Canada, you may want to consider beginning the process swiftly, to avoid others from beating you to the process.

Fees Will Increase

Prior to the June 2019 start date, the cost of a basic Canadian trademark is $250 and covers any number of goods and services. Once the new laws take effect, applicants will pay an initial $330 fee to register, which will include only one class of product or service. Any additional classes will cost $100 per class.

Canada will also be joining the Nice Agreement to align more closely with their international counterparts. The Nice Agreement has 45 classes:

• 34 product classes
• 11 service classes

While you probably aren’t planning on registering in all 45 classes, even a few classes at $100 each can add up quickly. If you have not already registered your trademark in Canada, you may want to consider doing so before the new changes take effect. If you plan to register after June 17, 2019, you may need to be very selective in which classes you register to keep your registration costs from skyrocketing.

Changes to International Registration

In June 2019, Canada will become one of over 90 member countries in the Madrid Protocol.  This means that any foreign individual or business owner will be able to extend their international applications to include Canada.  In addition, Canadian trademark holders will be able to apply their local application to other member countries.  Keep in mind that simply filing through the Madrid Protocol does not guarantee approval.  Trademarks are considered on a country-by-country basis, and the Canadian Intellectual Property Office, or CIPO, will make the final determination.

Additional Changes

Under the new law, Canada’s definition of a trademark will be greatly expanded.  In addition to names, logos, and slogans, non-traditional marks may now be registered.  This includes smells, tastes, color schemes, moving images, and even holograms.  However, the law will also permit CIPO to object to trademark applications that do not demonstrate a high level of distinctiveness.  This could result in fewer application approvals.

Applicants will also be able to divide their applications to separate problematic portions of the application from those that will be more easily accepted.  This will allow many applicants to proceed with registration on some trademark classes without delay while other portions are being determined.  Additionally, the renewal period for trademark registrations will be shortened from fifteen years to ten years.

Canada’s new trademark laws will be more aligned with the guidelines of other countries throughout the world. Its membership in the Madrid Protocol and the Nice Agreement will provide consistency to international trademark owners wishing to expand into the Canadian markets. There are, however, some incentives for registering your Canadian trademark before the new laws take effect. Because the law will no longer require declaration of use, the most critical reason to register quickly is to avoid others trademarking your brand first. In addition, the costs associated with registering your trademark will rise significantly after June 17, 2019. To take advantage of smaller fees, and ensure that your trademark remains under your control in Canada, it may benefit you to register before that date.

• SHARE THIS ARTICLE ON:

Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.