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22 January 2018
Search now to determine availability of marks
File now to avoid new proof of distinctiveness requirements
File now to obtain benefits of country-of-origin registration
Review portfolio now to ensure important brands are protected
Implement watch service now in order to oppose applications
File now to save on filing fees for brands that span numerous classes
With the start of 2018, the countdown to the implementation of Canada's new trademark law has begun in earnest. Announced in 2014, Bill C-31 is expected to be implemented in full in early 2019. The Madrid Protocol, the Nice Classification for Similar Goods and Services and a myriad of other changes to Canadian law and practice will then be fully in effect.
One significant change is the removal of the requirement to provide information regarding the use of a trademark in Canada during the application and registration process. This will make the registration process easier, most likely faster and, in some cases, less expensive. However, while the changes will have benefits, there will also be some new challenges. A number of key strategies can be employed during the remaining months before the new law takes effect in order to:
Canada will not become a first-to-file country. The use of a trademark in Canada will remain a key factor for determining the priority of rights to the mark once the new law comes into effect. However, once new applications which use information are on file, it will be harder to determine which party has entitlement to a mark. Thus, searching before the end of 2018 may result in cost savings, as without use information, marketplace investigations may be necessary in order to determine which party has first Canadian use of the mark.
The new law will include requirements for submitting proof of distinctiveness for sound marks, which can be registered at present without this limitation. Further, it will be open to an examiner to make a preliminary objection to the registration of a mark on the basis that it is not inherently distinctive. While it is not yet clear under what circumstances the latter provision may be invoked or what form will be required for the submission of proof of distinctiveness, the requirement will undoubtedly increase the cost of the application process in cases where it is applied.
The existing Trademarks Act provides trademark applicants that have a trademark registration in their country of origin (outside Canada) with a benefit when seeking to register in Canada marks that:
While evidence showing acquired distinctiveness is required in order to register a mark, the extent of this evidence is somewhat less than that required when there is no country-of-origin registration. This benefit will not be included in the new law.
The requirement that a mark which is the subject of an application for registration in Canada be used or proposed to be used in Canada is embedded in the definition of a 'trademark' in the new law. However, there is no requirement to:
There is some concern that the new system will be more attractive to parties that wish to register marks for illegitimate purposes (commonly referred to as 'pirates' or 'squatters'). Whether the change will actually lead to an influx of such applications remains to be seen, but the possibility nonetheless provides good reason to conduct a portfolio review and ensure that important brands are protected before the new trademark law comes into force.
A watch service for newly filed and published applications will be more important under the new law. Since use information need not be included in an application, filing will be easier and applications will likely proceed quickly. Remaining alert to filings by competitors and possibly illegitimate parties will be advantageous. Making note of and successfully opposing an application before it proceeds to registration will avoid the necessity of:
At present, Canada is a bargain for trademark filers, with a flat fee for filings that is unaffected by the number of classes of goods and services included in an application. Along with the Nice system, the new law will introduce a fee-per-class structure. Filing now will reduce costs for brand owners that anticipate the need to file for trademarks for goods or services that span multiple classes.
The new trademark law will introduce benefits for brand owners globally, including:
However, by considering the above six key strategies and planning now, it will be possible to take advantage of some of the benefits of the existing law and maximise positioning for the implementation of the new law before it takes full effect.
For further information please contact Keltie Sim Luft at Smart & Biggar/Fetherstonhaugh by telephone (+1 416 593 5514) or email (email@example.com). The Smart & Biggar/Fetherstonhaugh website can be accessed at www.smart-biggar.ca.
The materials contained on this website are for general information purposes only and are subject to the disclaimer.
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