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:
Earlier this year, the trademark
system in Canada was modernized to bring in the Nice classification system.
The Nice classification system is an international classification system that
is used to classify goods or services into 34 classes for goods and 11 classes
for services for the purposes of registering trademarks. As part of this
modernization, the Canadian Trademarks Act was amended to add section
44.1, which provides the following:
44.1 (1) The Registrar may give
notice to the registered owner of a trademark requiring the owner to furnish
the Registrar, in the prescribed time and manner, with a statement of the goods
or services in respect of which the trademark is registered, in which those
goods or services are grouped in the manner described in subsection 30(3).
(2) The Registrar may amend the
register in accordance with the statement furnished under subsection (1).
(3) If the statement required by
subsection (1) is not furnished, the Registrar shall by a further notice fix a
reasonable time after which, if the statement is not furnished, the Registrar
may expunge the registration of the trademark or refuse to renew it.
(4) Any question arising as to
the class within which any goods or services are to be grouped shall be
determined by the Registrar, whose determination is not subject to appeal.
As a result, owners of existing
trademark registrations in Canada will be required to classify the listed goods
and/or services in order to maintain rights to the mark in Canada or the
registration will be expunged. We note the Canadian Trademarks Office
allows six-months to respond to this notice. The deadline to classify is
extendable for another six-months but under limited exceptional
circumstances. If the deadline to classify is missed, a notice of default
will issue which provides two-months to respond failing which will result in
the expungement of the registration.
If a response is filed on or
before the deadline to classify, the Canadian Trademarks Office will either
accept the proposed classification of the goods and services, or issue an
action requesting amendments.
Please note these notices issue
to the agent of record noted on the registration. If the trademark owner
renews directly or a third party renews the registration on behalf of the
trademark owner, the agent of record will receive the notice only.
If you require any assistance with the above (or any other trademark matters), don’t hesitate to contact the Fasken IP group.
The Canadian Intellectual Property Office (“CIPO”) recently released its annual report, IP Canada Report 2019, on the statistics and trends regarding the intellectual property (“IP”) system in Canada and use of IP globally by Canadian companies. One interesting development highlighted in the report is that the number of Canadian companies filing trademark applications in China has seen steady growth over the past decade with 3,401 applications in 2018, a 265% increase since 2008.
This is likely due to several factors, including the growth in consumer spending in China; however, Canadian businesses who do not intend to sell their goods within the Chinese market may still want to consider registering their trademarks in China. China has a “first-to-file” trademark system and no “use” requirement, meaning valuable marks can be registered in the names of third parties looking to take advantage of business owners who fail to protect their IP in China.
Chinese trademark registrations are important for companies that manufacture their goods in China for export to Canada and other jurisdictions. Chinese border services may detain goods due for export, however, on the basis that they infringe the registered Chinese trademark rights in an effort to crack down on counterfeits. In order to avoid these types of disputes, and incurring significant costs in getting the goods out of detention, we recommend that all companies manufacturing goods in China register their trademark with the Chinese National Intellectual Property Administration to allow for the easy export of their goods from China.
If you would like to discuss registering a trademark in China or elsewhere, please contact a member of the Fasken IP team.
