Bill C-31 and its Impact on Canadian Trademark Law

Create Time 2018-10-24 12:10    Views:18729

Canada trademark registration

Canada is completing the last steps for implementing changes to its trademark law regime brought in under Bill C-31. The upcoming changes are expected to come into force by early 2019 and will be the most significant changes to Canadian trademark law in the past 50 years. The changes involve the implementation of international trademark treaties, including the Madrid Protocol, and will align Canada with the rest of the developed world.

These upcoming changes present many interesting opportunities and challenges to brand owners in Canada and abroad. Some of the more significant changes to Canada’s trademark law landscape include the following: (1) an expanded definition of trademark, (2) the removal of "use" as a requirement for registration, (3) the compliance with the Nice Agreement, and (4) changes to the fee structure. This article highlights each of these changes along with their potential impact.

New types of trademarks

Under Bill C-31, the definition of trademark will be greatly broadened to include more non-traditional marks which have become distinctive of their owners  at the time of filing. The new definition will include the protection of holograms, scent, taste, textures, three-dimensional shapes, moving images (e.g., GIFs), sounds, and the positioning of signs. As a result, "distinguishing guise" will no longer be a category of trademarks. Distinguishing guise, as currently defined in the Trade-marks Act, is the shaping of goods or their containers or a mode of wrapping or packaging goods, the appearance of which distinguishes the source or origin of those goods.

The expanded definition of trademark will allow brand owners to broaden their trademark portfolio to gain protection and enforcement rights over non-traditional trademarks. For example, a beverage company may submit an application to register a trademark for each of its drinks with a distinctive smell or taste. While Bill C-31 is not yet in force, brand owners should take a close look at their brand portfolio now and consider the opportunity to expand its brand protection under Canada’s new trademark law.

The Removing "use" as a requirement for trademark registration

Under the current Trade-marks Act, applications based on "use in Canada" must identify a date of first use and applications based on "proposed use: cannot proceed to registration until a declaration of use is provided. With the new regime, the use requirement will be removed and identifying the date of first use will no longer be required for a trademark application. This change will likely be the most significant change under Bill C-31. Importantly, however, "use" will continue to have an important role under Canadian trademark law as prior use of a trademark will still afford trademark owners priority over subsequent users. Trademark owners will also still be able to challenge a trademark on the basis of non-use.

Generally, the removal of the use requirement for trademark registration will help streamline the application process and make it less expensive. However, it also opens the doors to unmeritorious trademark applications as applicants will have an easier ability to secure a registered trademark without ever having used the respective trademark anywhere in the world. As a result, oppositions, litigation and non-use cancellation proceedings are expected to increase significantly. Also, trademark monitoring is expected to become more advantageous to trademark owners. 

Analysis of the Canadian Trademarks Database to determine trademark registrability will likely become more complicated and difficult as trademarks filed under the new regime will have no information on the length of time a mark has been in use. Such information on use will likely be determined through investigations and through opposition proceeding. This will also likely increase the cost of searches, as further investigations into the registrability of potential marks will be needed. Resultantly, being the first to file an application will likely be of greater benefit to trademark owners under the new Canadian trademark regime.

Compliance with the Nice Agreement

Currently under the Trade-marks Act, trademark applications need to identify the goods and services associated with the trademark in "ordinary commercial terms". Applicants may also voluntarily use the Nice International Classification System, which provides a classification of goods and services and is administered by the World Intellectual Property Organization (WIPO). When Bill C-31 comes into force, Canada will implement the Nice Agreement (1957). As a result, each good and service identified in an application must also identify their class in accordance to the Nice International Classification System.

Changes to the trademark registration fee structure

Along with the above changes, the costs of registering a trademark with the Canadian Intellectual Property Office (CIPO) will also change. Currently the government fee for registering a trademark is $450 (with a fee of $250 at filing and $200 at registration) regardless of the number of classes of goods or services associated with a trademark. Once the amended Trade-marks Act comes into force, the government fee will be $330 for the first class of goods or services associated with the trademark plus $100 for each additional class.

The registration renewal fee will also change from the current flat fee of $350 to a fee of $400 for the first class of goods or services associated with the trademark plus $125 for each additional class.

Accordingly, brand owners (both in Canada and abroad) with multiple classes of goods or services should consider filing trademark applications in Canada before Bill C-31 comes into effect to avoid additional costs.

As the countdown continues towards implementation of Canada's new trademark law, we will be monitoring the changing landscape closely. If you require assistance in a trademark application, please contact our experts.

Disclaimer:  This website is not intended to offer legal advice or to be a substitute for a consultation on a case by case basis with an attorney.  The information provided above is meant for informational purposes only and may be subject to change. 

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