Amendments to Canada's Trademarks Act are coming - Are you ready?

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Effective June 17, 2019, Canada’s Trademarks Act (“Act”) will see some noticeable changes, and these amendments will significantly alter the landscape in Canada regarding filing applications, registrations, and renewals. Owners of Canadian Trademark Registrations, applicants in pending applications, and potential new applicants should carefully assess and review their options going forward.

First, for owners of existing registrations, currently, a registration can be renewed at any time for a further 15-year term on payment of the $350 government fee. However, Section 46(1) has been amended to read:

46 (1) Subject to any other provision of this Act, the registration of a trademark is on the register for an initial period of 10 years beginning on the day of the registration and for subsequent renewal periods of 10 years if, for each renewal, the prescribed renewal fee is paid within the prescribed period.

(2) If the initial period or a renewal period expires and the prescribed renewal fee has not been paid, the Registrar shall send a notice to the registered owner stating that if the fee is not paid within the prescribed period, the registration will be expunged.

(3) If the prescribed renewal fee is not paid within the prescribed period, the Registrar shall expunge the registration. The registration is deemed to have been expunged at the expiry of the initial period or the last renewal period.

(4) If the prescribed renewal fee is paid within the prescribed period, the renewal period begins at the expiry of the initial period or the last renewal period.

(5) A registered owner is not permitted to apply under section 47 for an extension of the prescribed period until that period has expired, and the Registrar is not permitted to extend the period by more than seven days.

(6) For the purposes of this section, the prescribed period begins at least six months before the expiry of the initial period or the renewal period and ends no earlier than six months after the expiry of that period.

On or after June 17, 2019, a request for renewal can only be submitted within six months before or after the renewal due date. The applicable government fees are increased to $400 for the first class and $125 for each additional class. After June 17, 2019 the registration term and renewal term shall be 10 years. In addition to renewal issues, owners of existing trademark registrations may be issued a notice by the Trademarks Office to class existing unclassified registrations.

RECOMMENDATION: Owners should review their existing portfolio of Canadian Trademark Registrations to determine if there is any benefit to requesting renewal prior to June 17, 2019 and to class existing unclassified registrations.

What other impacts need to be considered?

renewal during transition period

Under Section 46(1) of the current Act, registered trademarks are subject to renewal every 15 years. During the transition to the new Act, the fee, renewal term, and requirement to group and class goods or services according to the Nice classification will be dependent on several factors.

Established by the Nice Agreement, which is administered by the World Intellectual Property Office (WIPO), the Nice Classification groups goods and services into 34 classes of goods and 11 classes of services, which each class having a heading that gives general indication to the fields in which a good or service belongs.

1) If renewal is requested after the coming-into-force (“CIF”) date of the new legislation for a registration that expired before the CIF date:

  • the old renewal fee ($350) applies;

  • the renewal period is for 15 years;

  • the owner will not be required to group and class goods or services according to the Nice Classification; and,

  • the Registrar will, shortly after the renewal, send a notice requiring the grouping of goods or services according to the Nice classification.

2) If renewal is requested and processed before the CIF date and the registration expires after the CIF date:

  • the old renewal fee ($350 or $400) applies;

  • grouping the goods or services according to Nice classification is not required until a notice under Section 44.1 of the amended Act is issued; and,

  • if the renewal period granted was for 15 years, it will be amended to 10 years as the effective date of renewal is after the CIF date of the amended Act.

 3) If renewal is requested after the CIF date for a registration that expired after the CIF date:

  • the new renewal fee applies;

  • the renewal period is for 10 years; and,

  • the registered owner will be required to group and class goods or services according to the Nice classification.

IMPORTANT NOTE: If the application is based on proposed use and use has not yet commenced, after June 17, 2019 the Trademarks Office will register the mark on payment of the registration fee without requiring a declaration of use but the term of protection will be 10 years, not 15.

RECOMMENDATION: For applications that have been allowed, consider paying the registration fee prior to June 17, 2019.

Divisional Applications

Amendments to the Act permit the filing of divisional applications as outlined:

39 (1) After having filed an application for the registration of a trademark, an applicant may limit the original application to one or more of the goods or services that were within its scope and file a divisional application for the registration of the same trademark in association with any other goods or services that were:

(a) within the scope of the original application on its filing date; and,

(b) within the scope of the original application as advertised, if the divisional application is filed on or after the day on which the application is advertised under subsection 37(1).

(2) A divisional application shall indicate that it is a divisional application and shall, in the prescribed manner, identify the corresponding original application.

(3) A divisional application is a separate application, including with respect to the payment of any fees.

(4) A divisional application’s filing date is deemed to be the original application’s filing date.

(5) A divisional application may itself be divided under subsection (1), in which case this section applies as if that divisional application were an original application.

RECOMMENDATION: Where a confusion objection is raised after June 17, 2019 in respect of particular goods or services of an application, the applicant may decide to divide out those goods or services so that portion of the application can proceed to advertisement.

If a clearly descriptive objection has been raised or maintained in relation to some of the goods or services of the application, the applicant may wish to divide out the impugned goods or services so that the original application can proceed to advertisement.

If an opposition is filed against an application, the applicant may divide out some of the goods or services to allow the original application to proceed to registration.

Word Mark Applications

Prior to June 17, 2019, for an application for a word mark without reliance on any particular font or design, the application simply presented the mark in block letters. Under the amendments:  

31 An applicant who seeks to register a trademark that consists only of letters, numerals, punctuation marks, diacritics or typographical symbols, or of any combination of them, without limiting the trademark to any particular font, size or colour shall:

(a) file a representation under paragraph 30(2)(c) that consists only of characters for which the Registrar has adopted standard characters;

(b) include in their application a statement to the effect that they wish the trademark to be registered in standard characters; and,

(c) comply with any prescribed requirements.

If an applicant requests registration of a trademark that appears to be in standard characters but (i) does not include or reference a standard character statement, or (ii) contains characters not in the standard character set, the trademark will be treated as a non-standard character trademark. In such cases, the trademark will be scanned and represented as filed.

RECOMMENDATION: In applications filed before June 17, 2019, applicants should add a statement that the trademark consists only of standard characters.

Third Party Rights

After June 17, 2019, notifications of third party rights will be permitted as an informal way for third parties to bring to the attention of the Registrar information bearing on the registrability of a pending trademark application. The procedure is limited to three grounds:

(i) confusion with a registered trademark under paragraph 12(1)(d) of the Trademarks Act;

(ii) entitlement under paragraph 37(1)(c) of the Act; or,

(iii) registered trademark(s) used to describe goods or services in the application.

The notice does not create an inter-parties proceeding between the applicant and the third party, and does not replace opposition proceedings.

RECOMMENDATION: To file a notification, a written request must be submitted by mail or fax, addressed to Notice of Third Party Rights, c/o Deputy Director, Examination Division, Trademarks Office.

Other recommendations

  • After June 17, 2019, applicants should consider using their Canadian application as a basis for requesting International Registration under the Madrid System.

Through the implementation of the Madrid Protocol, Canadians will now have the ability to file trade-mark applications with the World Intellectual Property Organization (WIPO), which administers the Madrid System. Check out our other blog article on “Canada's Adherence to the Madrid Protocol - What Does This Mean?

  • For applicants considering filing trademark applications in Canada, filing prior to June 17, 2019 at the flat government filing fee regardless of the number of classes of goods or services will result in cost savings if three or more classes of goods and/or services are covered.

  • Canadians should consider filing for protection on their portfolio of trademarks as soon as possible in order to prevent International Registrations for the same or similar marks being extended to Canada. It is highly recommended to have watch services monitor recently filed and/or advertised applications in Canada. If the applied for marks are confusing with trademarks or trade names used, consideration should be given to whether there are any grounds of opposition, what investigations may be required to support any opposition, or if a Notice of Third Party Rights should be filed.

  • Improper use of trademarks can give rise to the risk of cancellation for non-use. Care must be taken to properly identify the mark as a trademark on the goods, their packaging or in advertising. If the mark is used by a person/company other than the registered owner a license agreement should be in place providing the Registered Owner with direct or indirect control of the character or the quality of the subject goods or services offered by licensee. Finally, if there has been a transfer of the registration it should be recorded in the Trademarks Office to prevent the mark from being invalidated for loss of distinctiveness.

  • The amendments to the Act will permit registration of non-traditional marks in Canada including consisting in whole or in part of a sound, hologram, moving image (motion), scent, taste, colour per se, a three-dimensional shape, a mode of packaging goods, a texture, or a positioning of a sign.

Final Recommendation: With the changing landscape in Canada, it is highly recommended that businesses have IP Audits conducted to identify their rights, ensure they are being used properly and if registration is available.

FOr more information, or for help from CArson Law and our IP Division

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