Trademarks, currently introduced to as “marks”, will be pointed to as “signs”. Applicants will also be able to file applications for an extended list of non-traditional signs, such as shape, sound, smell, taste, texture, hologram, single color or color combinations without delineated outlines, three-dimensional and moving images. However, the Canadian Intellectual Property Office (CIPO) will consider these non-traditional signs for distinctiveness and will be ready to request proof of distinctiveness in Canada, thus making it more challenging to register many non-traditional signs, including ones now allowed without examination for distinctiveness, such as sound marks.
The registrations will still be directed to cancellation for non-use. While this clarifies the application process, it produces a greater risk of trolls and squatters and initiates the process of clearance searches more difficult and costly. Under this new trademark regime, being the first to apply will be very important.
Declarations of use will no longer be needed after the CIF date: Allowed applications will proceed directly to registration after the CIF Date upon payment of the government fee, without the necessity to file the declaration of use for intended use applications. If owners of recognized applications wish to continue to registration before the CIF Date, applicants must still file a statement of use (for proposed use applications) and pay the registration fee. Applicants who based their applications on the intended use and have not used their trademarks in connection with all goods and services may be able to reach their deadlines until the CIF Date to avoid restricting coverage to only goods and services in use in Canada.
For all new trademark applications and any pending appeals that have not been approved by the CIF Date, goods and services will need to be grouped into the 45 International Classes, setting the system with most of the world.
The new Trademark law has eliminated the ability to apply a distinguishing guise. This type of intellectual property is often subsumed within the new meaning of a sign.
Canada will follow the Madrid Protocol, thus allowing Canadian applicants to register applications with the International Bureau of the World Intellectual Property Association (WIPO) and access 118 jurisdictions all over the world. Filing a WIPO application for an international registration offers a smooth process and cost savings for foreign filings for Canadian brand owners. Owners need to have a Canadian application or registration first.