Canada’s Bill C-31 made significant changes to Trademark law in Canada, effective on June 17, 2019.
Summary of Canadian Trademark Law Changes (2019)
The changes to Canada’s trademark laws, under Bill C-31, will officially go into effect June 17, 2019.
The new Trademarks Act includes the following changes:
- Canadian trademark application fees going up from a flat fee of $250 to $330 for the first class and $100 for each additional class.
- Canada will become a party to the Madrid Protocol international filing system;
- Canadian brand owners will be able to secure an international registration with a single application via the Madrid System.
- Declarations of Use and registration fees will be eliminated;
- The Nice Classification system for goods and services will be implemented;
- New types of trademarks: Non-traditional marks (e.g., colours, three-dimensional shapes, sounds, scents, and textures) are now protectable;
- Greater flexibility in correcting errors;
- Reduced evidence required in certain cases to transfer ownership;
- The option to file evidence electronically in administrative proceedings;
- “Letter of Protest” can be sent to Trademark Examiners with respect to applications of interest.
- The ability to divide applications and merge registrations;
- Applications may now be divisible during prosecution;
- Advertisement, registration and renewal can only be achieved once goods and services are classified;
- The new Trademarks Act (no more hyphen in “Trade-marks”);
- The registration term will be decreased from 15 years to 10:
These changes will provide enhanced protection to trademarks in Canada and more closely align Canada with other jurisdictions, enabling streamlined trademark filing and prosecution strategies on a global basis; and
- Renewal requests will only be accepted six months before or after a renewal deadline.
Read the Canadian Trademarks Act for complete details.
CIPO is making progress to modernize Canada’s intellectual property (IP) framework.
The following is an overview of the trademarks legislative work that is underway to help Canada better align itself with international best practices. Take a look at the Update to the trademarks online tools page to see which applications and forms will be adapted to better implement these changes.
Summary Canadian Trademark Legislative Changes:
- Canadian Trademarks legislative changes
Canadian Trademarks legislative changes
Participation in the international treaties will modernize Canada’s IP systems to better align with international best practices, reduce the administrative burden for innovative Canadian businesses, and draw foreign investment to Canada. It will also allow Canada to take part in discussions and influence matters related to IP on the international stage.
Three different bills with trademarks components received Royal Assent: Bill C-8, Bill C-31 (which includes accession to the Nice Agreement, the Singapore Treaty and the Madrid Protocol) and Bill C-59. These amendments are all reflected in the modernized Trade-marks Act.
Important to know
To bring these new laws into force, we are in the process of reviewing our business procedures, office practices, policies, and informational contents. We are also working on adapting technologies such as web applications and databases and updating the Trademarks Regulations.
Read more at CIPO’s website
Amendments to the Trade-marks Act
« marque de certification »
« marque de commerce »
« classification de Nice »
« signe »
Reference to “person”
Confusion — trademark with other trademark
Confusion — trademark with trade name
Confusion — trade name with trademark
UNFAIR COMPETITION AND PROHIBITED SIGNS
When trademark registrable
Registrable if distinctive
Registration of confusing trademarks
PERSONNES AYANT DROIT À L’ENREGISTREMENT D’UNE MARQUE DE COMMERCE
Entitlement to registration
Exception — utilitarian feature
Concurrent use of confusing marks
Registration of certification marks
Action by unincorporated body
Enregistrement d’une marque de commerce créant de la confusion avec la marque de certification
Descriptive certification mark
List of trademark agents
Requirements for application
Further evidence in certain cases
Date of application abroad deemed date of application in Canada
Withdrawal of request
(f) that, at the filing date of the application in Canada, the applicant was not entitled to use the trademark in Canada in association with those goods or services.