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19 March 2018
Canada is finally completing the last steps necessary to implement its new trademark law. The changes will be the most significant in 50 years – both procedurally and substantively.
The process has been a slow one. While Canada's new trademark law was finalised in 2014, it has yet to come into force. Before it can be implemented, the Trademarks Office and the government must achieve two milestones:
The first milestone will be achieved in 2018, having started with the release of the final draft of the Trademarks Regulations on February 10 2018. Although there is a 30-day consultation period, the Trademarks Office is unlikely to consider any significant changes to the draft regulations, except where there may be errors or omissions or areas of widespread concern. The regulations will then be amended as appropriate and, according to the Trademarks Office's projections, are expected to be officially published in their final form in October 2018.
Assuming that the publication process proceeds as planned and that the IT system is upgraded according to schedule, the Trademarks Office anticipates that the new trademark law will be in force by early 2019. However, the exact date is unlikely to be determined before Autumn 2018.
Key changes to the trademark law and their impact are as follows.
Simplified trademark applications
Trademark applications will be simplified, as applications will no longer need to identify a date of first use. Details of the use and registration of a mark abroad will also no longer be required.
While this will generally result in a faster and cheaper process, it also opens the door to trolls and squatters. Contentious proceedings – such as oppositions, litigation and non-use cancellation proceedings – are therefore expected to increase significantly. As a result, suitable trademark monitoring should be considered.
Expanded definition of 'trademark'
The definition of a 'trademark' will be greatly expanded to cover anything that functions as an indicator of source and will include any sign or combination of signs that serve that purpose.
As a result, protection will be available for traditional and non-traditional marks, including:
Other key changes are as follows:
The government accepted comments concerning the draft Trademarks Regulations until March 11 2018.
For further information on this topic please contact Philip Lapin at Smart & Biggar/Fetherstonhaugh by telephone (+1 613 232 2486) or email (email@example.com). The Smart & Biggar/Fetherstonhaugh website can be accessed at www.smart-biggar.ca.
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