Key Changes to the Canadian Tradmarks Act for Foreign Trademark Owners

In early 2019, a modernized Trademarks Act (“TMA”) is expected to come into force. One of its aims is to adapt Canadian legislation to international conventions, but it will also bring Canadian trademarks legislation closer to that of the European Union (EU). This reform was made against the backdrop of the conclusion of a free trade agreement between Canada and EU. This modernized TMA will distance the Canadian trademark registration regime from its current foundation, which is mainly use-based registration similar to the US regime.

We will highlight some of the key changes that may matter for foreign owners seeking registration in Canada:

1. Use will no longer be a prerequisite for registration. This is the most notable change. Similarly to most countries other than the USA, applications will no longer contain any filing basis such as intent-to-use, actual use or use and registration abroad. An application will mature to registration after publication even if the applied mark is not actually used in Canada. This could be helpful to some foreign owners since they will be able to secure registration in Canada at the pre-commercialization stage. Unfortunately, the Canadian trademark database will become much less informative as details regarding use of pending applications and registered marks will disappear, which will increase the need for investigations.
2. Nice Classification will be implemented and filing fees will be based on the number of classes. It will become mandatory to group and classify goods and services in new applications according to the Nice Classification. This requirement is intended to apply also to marks registered prior to the coming into force of the new TMA. The single uniform filing and registration fees currently applicable in Canada in the amount of $450, will be replaced by a proposed fee-per-class of $330 for the first class and of $100 for each additional class.
3. International registration will be possible in Canada. As Canada will become officially a party to the Madrid Protocol, foreign owners will be able to seek territorial extension of international applications in Canada.
4. Term of registration will be shortened. The current 15-year term of registration from the date of issuance of registration will be reduced to a 10-year term. The new term will only apply to new applications filed, pending trademark applications registered or registrations renewed after the coming into force of the new version of the TMA. Foreign owners should review their Canadian trademark registrations that have to be renewed before 2019 to take advantage of the longer term that is still available for a limited time. Renewals can be made within 12 months of the expiration date.
5. Division of applications will be allowed. Applicants will be able to divide trademark applications. This will be helpful to overcome objections to registration by an examiner or third party opposition or cancelation proceedings.
6. Letter of Protest will be available. It will be possible to send a letter of protest to bring to the Examiner’s attention evidence important to the registrability of a pending trademark application by a third party

There are several other changes to the TMA that will come into force including those aimed at simplifying aspects of opposition proceedings and recordation of assignments. Although the harmonization of the Canadian law with foreign legislations is welcomed, the practice under the new TMA will bring some challenges for foreign owners seeking trademark registration in Canada, especially if there is a rise in the number of trademark trolls. Use of trademarks will remain important to determine priority of rights but owners will have to be particularly diligent in the monitoring and opposition of third party applications to avoid junior users obtaining conflicting rights.