2019 was “Marked” by Significant Changes to Canada’s Trademarks Legislation

After much anticipation, Canada’s new Trademarks Act (the “Act”), came into force on June 17, 2019. The Act introduced significant changes to Canadian trademarks laws which, together with the associated Trademarks Regulations, align Canada’s trademark prosecution and enforcement processes with those of the United States and the European Union, and facilitate Canada’s implementation of international intellectual property treaties.

Some of the key changes under the new Act are outlined below:

1. Canada’s accession to the Madrid Protocol enables Canadian and international trademark owners to apply for registration of their marks in multiple jurisdictions through a centralized global system comprised of three stages. First, the applicant files an application for international registration in its national intellectual property office, which will certify the application and forward it to the World Intellectual Property Organization (“WIPO”). Next, WIPO formally examines the application and issues an international registration for the mark. Finally, WIPO forwards the proposed registration to the national intellectual property offices designated under the Madrid Protocol where protection is sought. Each national intellectual property office will substantively examine the application in accordance with its domestic laws and grant domestic registration of the mark.
2. The scope of what constitutes a trademark has been broadened to include a sign or a combination of signs, including words and designs as well as personal names, letters, numerals, colours, figurative elements, three-dimensional shapes, holograms, moving images, modes of packaging goods, sounds, scents, tastes, textures and the positioning of signs.
3. A trademark whose features are primarily utilitarian will not be registrable.
4. The grounds upon which the Federal Court may expunge a trademark registration have been expanded to include circumstances in which a registration is likely to unreasonably limit the development of an art or industry.
5. When reviewing an application for registration of a trademark, examiners will be able to object to registration of a trademark when their preliminary view is that the trademark is not inherently distinctive.
6. An applicant is able to apply for registration of a trademark without having to declare that the mark has been or is proposed to be used in Canada. However, non-use has been added as a ground upon which an application for registration may be opposed.
7. An application for registration of a trademark must classify the goods and services in association with which the mark is used in accordance with the system established by the NICE Agreement.
8. Application fees are now calculated based on the number of NICE classes listed in the application. The fee for the first class is CAD$330.00, plus CAD$100.00 for each additional class (e.g., to file an application for registration of a mark in association with goods and services in two NICE classes would cost CAD$430.00 in government fees).
9. Trademark applicants are permitted to file divisional applications to carve out certain goods and services from an original application that is subject to an examiner’s objection. A divisional application has the same filing date as the original application but is considered separate from the original application with respect to the payment of fees.

Fasken’s experienced trademark agents and intellectual property lawyers would be pleased to discuss the impact of the new trademarks regime on your intellectual property portfolio.

Learn more about our trademark practice.