Changes to Canadian Trade Mark Law

Take home message

These changes provide an improved process for registration of trade marks in Canada, which will be more aligned with practices elsewhere, with fewer formalities and document requirements and therefore costs savings.

One change is that Canada will be a signatory to the Madrid Protocol international filing system. As with other countries which joined Madrid, a significant increase in trade marks filings is expected in Canada, taking advantage of the ease of process and cost savings. Australian traders who have business interests or potential business interests in Canada should be vigilant about monitoring competitor filing activity and diligent in securing protection of their marks in Canada.

When will the changes be introduced?

Amendments to the Canadian Trade Marks Act received Royal Assent on 19 June 2014, the regulations are currently being drafted and the new trade marks laws are expected to commence within the next six to twelve months.

Why are the changes taking place?

The changes are intended to align Canadian trade mark filing and registration processes with international treaties, and best practice in other countries. It is expected that this will reduce administrative burden at the Canadian Office, costs for business and modernise the registration process. Most importantly for Australian companies, the Canadian trade mark law will allow Madrid Protocol filings.

What are the key changes?

The changes which will ease the process for Australian companies to obtain registration in Canada include:

1. Madrid Protocol
   For Australian companies, this is the most anticipated aspect of the new law. This will allow Australian companies to include Canada as a designation to an International Registration, and so obtain benefits of the more streamlined process.
2. Bases for Filing
   There will no longer be a need to specify the bases on which a trade mark application is filed eg use, proposed use, or registration and/or use overseas. A Declaration of Use will not be required in order to achieve registration. The elimination of pre-registration statements of use/registration, and evidence of use as a precondition for registration significantly reduces procedural formalities.
3. Notice of Allowance
   As declarations of use have been eliminated, the stage of prosecution currently known as "Allowance" becomes redundant. Therefore, applications that are not opposed will automatically issue to registration.
4. International Classification
   In Canada trade mark applications were not divided into classes. The introduction of classes by the new law will allow Canadian registrations to mirror registrations in other jurisdictions. The requirement that the goods or services be described in ordinary commercial terms will remain. At the moment, Canada has a single application fee irrespective of the scope and breath of goods and services filed in an application and it is expected that a filing fee per class will be introduced by the new regulations.
5. Associated Trade Marks
   The need to agree to associated trade marks will cease. Currently, a registration records similar trade marks owned by the same owner as “associated trade marks”. Associated trade marks can only be assigned or transferred as a package, the aim being to prevent similar marks being owned by unrelated companies which could give rise to confusion in the marketplace. This is quite restrictive on the ability to sell and assign registrations. The elimination of associated trade marks means that trade mark owners can assign or transfer similar trade marks, as the onus will the on the owners not to trade in a way that causes confusion and thereby risk invalidating the registrations.
6. Divisional applications
   Under current laws it is not possible to file divisional applications. However, the new Act allows for limiting the original application to a portion of goods and services and filing a divisional application covering the remaining goods and services. This provides additional options for achieving registration when faced with official objections or opposition proceedings.
7. Section 45 Expungement
   The new legislation provides for expungement proceedings for only some of the goods and services covered by the challenged registration. Currently, it is necessary to file removal proceedings in relation to all the goods and services covered in a registration. More targeted removal actions should offer cost savings, or opportunity for negotiated resolution of conflicts.
8. Renewal
   The term of registration and renewal will be reduced from 15 years to 10 years in line with the term in most other jurisdictions.

Other, more minor amendments are to be introduced by the Canadian trade mark law. It is expected the transition to the new law will be relatively smooth.