This‌ ‌article‌ ‌is‌ ‌written‌ ‌by‌ ‌‌Yash‌ ‌Kapadia‌.‌ In this article, we explain the major developments that have taken place in recent years in Canada’s Trademark system. 

Introduction

In Canada, the statute relating to trademarks and unfair competition is the Trademarks Act, R.S.C. 1985 (hereinafter referred to as “Act”). 

As per the Act, a trademark means: 

“(a) a sign or combination of signs that is used or proposed to be used by a person for the purpose of distinguishing or so as to distinguish their goods or services from those of others, or

(b) a certification mark;”

A trademark is unique in its sense. It is crucial for a company to register a particular trademark as it denotes not only the actual goods and services that a company is selling but also that company’s reputation, goodwill and brand value.

By registering any trademark, an entity protects it under the given law from any sort of misuse by others and further also gains the exclusive rights to use it throughout Canada for a period of 10 years, a term that can be renewed thereafter. 

Through this article, we shall explain the recent changes that have been implemented in the trademarks system in Canada.

Changes in Canadian trademark law

The long-awaited Trademarks Act amendments came into force on 17th June 2019. This amendment Act altogether changed almost every aspect of trademark law thereby transitioning the intellectual property rights in the Canadian landscape. The major changes are listed below.

Changes to be at par with the International trademark law standards

Under the new legislation, Canada adopted the standard procedures of the Nice Agreement that concerns the international classification of goods and services for the purpose of the registration of various marks, the Singapore Treaty on the Law of Trademarks and further implemented the Madrid Protocol that relates to International registration of marks1.

When a country’s laws coincide or are similar to these internationally used conventions, it becomes easier to perform and run a business of protecting one’s trademarks internationally and also run a business beyond one country’s geographical boundaries. Canadians can now file only a single application and pay only one set of fees to apply for protection of a particular mark in over 100 countries. Furthermore, such an approach to have standardized international procedures also helps international companies to seek trademark protection for their businesses and marks in Canada too. 

“Use” or “Intent to use” no longer required

A person can now file an application for registering a trademark for goods or services if they propose to use the trademark in Canada in association with the goods or services mentioned in the application. The new trademark law has now eliminated the need to include grounds for filing in the trademark application. It is not relevant now, whether an applicant has used the trademark or intends to use the trademark or not. Now, anyone can file a trademark application irrespective of the fact that they intend to use the trademark or not. All that is needed by an applicant is a proposed use for the mark which is a much easier requirement for any applicant to satisfy as the intent to use has been eliminated. This kind of flexibility gives an entity the freedom to decide whether they want to use a mark in Canada and even if they may not want to use it immediately, they obtain protection for the mark. As a result of the above change in the trademark law, the Canadian trademark office has seen a substantial increase in pending applications2.

However, the ease to apply for a trademark in Canada also has certain drawbacks. Now it is practically possible for any person from any country across the globe to obtain a trademark registration even if they don’t intend on using the mark. 

Pursuant to this change, Canada now joins China, Europe and many South American countries that operate in a similar fashion to obtain a trademark registration.

Changes in the registration process

The registration process has also been changed to be at par with the international standards which include the likes of the Nice Agreement, the Singapore Treaty and the Madrid Protocol.

Canada agreed to comply with the Nice Agreement which consists of 34 classes of goods and 11 classes of services which is an international classification of goods and services applied for registration of trademarks. Also, now all goods and services that are listed in a trademark application have to be filtered as per the Nice Classification system.

This change applies to all applications not advertised or allowed by 17th June, 2019. However, all applications advertised or allowed prior to the date mentioned above and existing registrations will be subject to the requirements to classify their goods and services as per the Nice Agreement and classification upon their renewal.

Changes in application fees to government 

Furthermore, the effect of acceding to the Nice Classification system has resulted in changing relevant government applications and registration fees.

The Schedule of fees under the Trademarks Regulations outlines that under the new regime, government filing fees shall be charged on a per-class basis. The first class would cost $330 CAD and the subsequent classes for registration would require $100 CAD. The fees are submitted through the Canadian Intellectual Property Office website. If a paper copy of the application is filed, the initial fee for one class would be $430 CAD and $100 CAD for each additional class of goods or services to which the application relates as of the filing date.

Changes in the lifetime and renewal fees of a trademark 

Prior to the new trademark laws, trademarks in Canada were earlier registered for a 15-year term from the date of registration. That is now cut down to 10 years. Therefore, renewal applications of trademarks will have to be filed after every 10 years to ensure that the protection is subsisting.

As per Section 46 of the Act, a renewal of the registration of a trademark costs $400 CAD in government fees for the first class of goods or services to which the renewal is related. Further, a $125 CAD government fee is charged for every additional class in which registration is needed. The renewal fees are to be paid by the owner within six months in advance of the renewal date and not before. Moreover, it is pertinent to note that every trademark registration will now only be renewed if it fully complies with the requisites of the Nice Classification system.

Changes in eligibility of a trademark 

The new amendments brought about changes that have led to giving a better meaning to what is considered to be eligible for trademark registration purposes. Non-traditional signs such as colours, holograms, animated images, and scents are now eligible for protection in the Canadian market. Non-traditional trademarks are examined for their distinctiveness at the time of use to qualify for their registration of marks which differ from the evidence of prior use. The uniqueness of the proposed trademark is determined based on its distinctiveness rather than consumer recognition and goodwill. The benefits of this change in the law shall help business owners who make use of non-traditional marketing methods to gain consumers and also protect their interests in their unusual trademarks.

Changes in examination procedure of the trademark

As per the new trademarks laws in force, new and pending applications that have not yet been approved shall now be examined for distinctiveness. The Registrar of Trademarks is equipped with the power to ask for evidence of distinctiveness from any applicant as of the filing date for an application filed by them containing a mark that the Registrar may feel or maybe of the opinion that it is not a distinct mark. Since the amended legislation came into force, the Canadian Intellectual Property Office (CIPO) published various sets of examples of marks that would be objected to by reason of not being inherently distinctive. Some of these marks are as follows:

  • Primary geographic locations like London, Paris
  • Includes designs common to the trade like a generic sketch of grapes or apples and vine leaves for wine
  • Is the word for a particular colour where the goods are also of that same colour like white with a paper
  • Are one or two letters or numbers 
  • Are laudatory words and phrases like Ultimate, Best in the world, etc.

Considering this procedure is quite new, raw and unexplored, the trademark examiners and practitioners are in the learning phase and CIPO is welcoming comments from practitioners who have dealt with and are currently dealing with such objections. Initially,  evidence was required to be proved to clear the not being distinctive objection. However, now the language has been altered to accept comments or evidence or both.

Post this amendment, a number of objections have been given to marks that would otherwise be registered on the ground that their component parts are not inherently distinctive. These objections, therefore, appear to be at odds with a guiding principle of trademark prosecution: that a mark should be considered as a whole.

Therefore, in order to avoid any objections that lead to expensive prosecutions of an application, applicants registering trademarks must seek advice from lawyers or trademark experts before filing an application before the Registrar of Trademarks. 

Changes in editing or amending an application in any manner

The new legislation put forth provides better flexibility for correcting the errors made by applicants while submitting trademark applications. For example, allowing a change to the trademark if the desired mark is substantially the same as the applied-for mark. It further increases the department’s ability to divide applications, amend and merge several trademark registrations.

The allowance to divide an application to advance the registration of a trademark where an objection has been raised in connection with only a particular section/ part of the goods and services in the application is a valuable option. By dividing applications, applicants can obtain the registration of their mark for even some part/ section of the goods and services in the preliminary application while they continue to communicate with the concerned examiner in order to comply and make good the remaining objections.

Other minor changes

On 4th December 2018, the Federal Government of Canada gave its royal assent to a massive budget Bill (Bill C-86) that includes even further changes to the Canadian trademark law. This Bill draws our attention to address the grievances about trademark practice in Canada for years and to improve them by creating necessary changes and amendments similar to the ones that came into force in June.

The amendments of 2019 also brought about changes in priority claims. As per the amended legislation, any applicant can claim priority to any application filed in the preceding 6 months, however, not only those applications filed in the applicant’s country of origin.

Conclusion 

There has been a major transition in the trademark laws and the entire paradigm has changed considering that Canada is now at par with China, European countries in terms of its trademark laws. These amendments have opened the gateways of international countries to register trademarks in Canada that would lead to more and more foreign investment after the pandemic but it may also be anticipated that the local business would be at loggerheads with their upcoming international competition. The said amendments have their good and bad points to consider but more light shall be thrown on the positive aspects of the changes being implemented by the Canadian legislative system. 

All in all, courts have also been busy with respect to these new amendments coming into force as to what happens to cases that were filed before the amendment, the applications pending in the registry before the amendment came into force. The transition is happening in a fastrack process wherein the Courts have made notable decisions and some landmark judgments can be accessed here

In drawing things to a close, the amendments are a bold move taken by Canada and only time will tell if the change implemented in the trademark system would be beneficial to the future of the Canadian economy.  

References


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