AMENDMENTS TO CANADIAN TRADEMARK LAW

Canada has announced that the expected changes to the Trademarks Act will finally come into force on June 17, 2019. The changes are expected to simplify the domestic registration process. It will provide a way for e international registration process managed by the World Intellectual Property Organization (WIPO). The amendments to Canadian Trademark Law will bring Canada in involvement with three major intellectual property agreements. They are the Madrid Protocol, the Nice Agreement and the Singapore Agreement (Treaties). Canada’s addition to the Treaties will encourage international competitiveness for intellectual property owners. It will also reduce the cost and complexity of entering foreign markets.

Read More: Trademark Application in Canada

Major Amendments to Canadian Trademark Law

      1. Examination for Distinctiveness

The new legislation provides that the Examination Section will now start examining for distinctiveness. In addition to the current bases of examining for conformity with application content requirements, registrability, and entitlement based on the priority of the application.

      2. Evidence of Distinctiveness

According to the current legislation, the amendments provide that a trademark registration may be restricted to the defined territorial area in Canada in which the trademark is shown to be distinctive. As per the current legislation, evidence of distinctiveness is needed only where an applicant claims that its mark procured distinctiveness prior to the filing, despite that it is merely a name or is clearly descriptive of the goods or services, or a distinguishing form. Such evidence is to be provided to the Registrar particularly in the form of an affidavit or statutory declaration. Under the amended legislation, an applicant shall provide the Registrar with any evidence that the Registrar may need ascertaining that the trademark is distinctive at the filing date of the application for its registration if any of the following involves:

  • The applicant attempts to overcome objections to registrability based on a name objection or a precisely descriptive objection.
  • The Registrar’s introductory view is that the trademark is not naturally distinctive.
  • The trademark consists of a single color or of a combination of colors without described forms.
  • The trademark consists completely or primarily of a sign that is among a list of certain non-traditional marks, such as a three-dimensional shape of the goods, sound, scent, taste or texture.

      3. Goods and/or services to be classified according to the Nice Classification

After the Amendments to Canadian Trademark Law, Goods and Services will be classified according to the Nice Classification system. As per Nice Classification, there are 45 classes of trademark for the classification of goods and services.

Read More: Trademark Classification

      4. The WIPO governed Madrid Protocol will be implemented

Canada will join the Madrid Protocol after the amendments to Canadian Trademark Law. This will provide Canadian applicants to file applications with the International Bureau of the World Intellectual Property Association (WIPO) and accessing 118 jurisdictions worldwide. Filing a WIPO application for international registration offers a smooth process and cost savings for foreign filings for Canadian brand owners.

AMENDMENTS TO CANADIAN TRADEMARK LAW

      5. Divisional Applications will be available

According to Canada’s current legislation, it is not possible to divide applications. The amendments provide for the probability of limiting the initial application to a part of the goods/services claimed and filing a divisional application for the same trademark to cover other goods and services that were classified in the original application. This will render applicants with additional options when confronted with a complex office action or an opposition proceeding in which the issues concern to only a part of the goods and services for which the applicant seeks registration. In addition, a divisional application may itself be divided. The amendments also give that the Registrar can finally amend the register to join registrations of the trademark that begin from the same original application.

      6.  Letters of Protest may be filed against another party’s mark during the examination.

All pending trademark applications as on June 17, 2019, can simply register in Canada after surviving advertisement. No information or attestation as to use is required.

      7. Registration Term Shortened

  • Pending applications registered before June 17, 2019, will receive a one-time 15-year registration term. Subsequent renewal terms will be for 10 years only.
  • Pending applications that are registered after June 17, 2019, will receive a 10-year registration period with subsequent 10-year renewal periods.

      8. Renewal Term shortened

  • For existing registrations expiring before June 17, 2019, a one-time further 15-year renewal term will be granted.  The subsequent renewal term will be only 10 years each.
  • For existing registrations expiring before June 17, 2019, but for which renewal is carried out during the grace period after June 17, 2019, a further 15-year renewal term will be granted.  The subsequent renewal term will be 10 years.
  • For existing registrations expiring after June 17, 2019, the trademark renewal term will be 10 years, whether the registrations are renewed before or after June 17, 2019.

      9. Elimination of Allowance Stage

As per new Canadian Trademark Law declarations of use have been eliminated, the stage of prosecution currently known as “allowance” will be eliminated and applications that are not opposed will automatically issue to registration. The amendments provide that applications that are at the allowance stage when the new legislation comes into force will be allowed to issue the registration without the filing of a declaration of use, also if the application was filed on the basis of intent to use in Canada.

Further Amendments to Canadian Trademark Law

Further amendments to Canadian Trademark Law have been announced to discuss the expected growth of “trolls” or “squatters” under the new trademark regime.

  • Examined amendments could require trademark owners who recently obtained registrations to provide evidence of Canadian use within the first three years post-registration to sustain a trademark infringement action and/or a claim for depreciation of goodwill.
  • Grounds of opposition could be expanded to include “bad faith”. The Trademarks Opposition Board would also be permitted to grant confidentiality orders and subject its proceedings to case management. The amendments also examine cost consequences against the losing party.
  • The ability to file new evidence of the application of decisions of the Trademarks Opposition Board to the Federal Court of Canada could also be limited.

AMENDMENTS TO CANADIAN TRADEMARK LAW

Conclusion

Changes to the Trade-marks Act will take effect on June 2019. It will affect trademark registration and the application process both in Canada and abroad. This would indeed be interesting to observe the implications of these amendments. It is essential to familiarize yourself with these changes now and evaluate how they will affect the trademark(s) you use in your business operations.

If you are looking for registering your Trademark and want to reach the heights of success. Do not hesitate and give us a call at +91 8750008585 and we will assist you in the most possible way. For more queries, visit our website Trademark Cart. We provide Trademark Search to ascertain whether the mark is prior registered or not.

We provide services of Trademark Registration in IndiaTrademark Registration in DubaiTrademark Registration in Australia and in many other countries.

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By | 2019-07-23T13:14:56+00:00 July 23rd, 2019|Trademark|

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