Canada Syncs Up with International Trademark Laws: 5 Changes You Need to Know About
For years, trademark law in Canada has been somewhat distint from that in the rest of the world. However, all of that is about to change. In an attempt to bring Canadian trademark law in line with the rest of the world, a whole host of changes are on their way. Legislators hope that these changes will make procedures more efficient and will facilitate the development of Canadian businesses in foreign markets.
While some of these changes are being welcomed by the Canadian business community, others are stirring up controversy. One thing is certain; the implementation of these legislative changes will have significant consequences for the filing of trademarks and ownership of intellectual property in Canada. If you’re planning to register a trademark to protect your brand rights, here are a couple things to know about the upcoming changes to Canada’s trademark laws.
1. Description of products/services and Nice Classification.
Up until now, Canada has been one of the few countries that did not recognize the Nice Classification, an international system of classification of products and services for the purposes of registering trademarks, established in 1957 by the Nice Agreement. But that will soon change. Once the new laws are in place, trademark applicants will have to describe their product or service in a specific manner using “ordinary commercial terms”, in conformity with paragraph 30 (a) of the Trade-mark Acts
The products and services will also have to be classified as per the Nice Classification system and with the appropriate class number. This will apply to all applications, including those filed but not yet registered by the date the law comes into force.
Other than the cost of services for a trademark agent to help you complete and submit your application, two fees are required by CIPO, the Canadian Intellectual Property Office, for the registration of a trademark: a filing fee and a registration fee (totallinh approximately $500). Although we currently do not know by how much, these fees are expected to increase once the new changes come into force.
There will also be an increase in costs due to the transition towards the Nice Classification system. Under the new system, when filing a trademark, the fees paid will include registration in one class of goods or services. Each extra class will entail an extra cost, so the more classes a trademark is registered in, the higher the price will be. This will potentially increase the final cost by thousands of dollars.
Therefore, if you’ve been planning to register your trademark and are waiting for the perfect moment, act now to save quite a bit of money.
3. The condition of use
Presently, in order to register a trademark in Canada, an applicant must prove actual prior use in Canada, registration and use in a foreign country, or the intention to use the mark in Canada. Furthermore, the registration of a trademark can only be obtained when the product or service associated with the mark have actually been made available on the marketplace in Canada.
However, this will no longer be required after the new changes come into effect. An applicant will be able to register a trademark without ever using it anywhere in the world, a change that will make successful registration quicker and easier. It will be possible to register a mark for any type of service, even if the service is not offered in Canada, a chance that will provide a more comprehensive level of protection for your mark.
However, the removal of the “condition of use” will have one serious downside: trademark trolls. Since proving use will not longer be required, anyone will be able to register a trademark even if they have no intention of using it, planning only to resell it at a future date. This means that anyone wanting to use the trademark will have to buy the rights from the person who registered it first.
This is what happen when Target wanted to launch its first stores north of the border. In Canada, Fairweather, a Canadian women’s fashion retailer, had already acquired the rights to the Target trademark. In order to do business in here, Target was forced to buy the registered rights from Fairweather for quite the pretty penny.
4. A Shorter Period of Protection
Currently, a trademark registration in Canada is valid for 15 years. With the new changes, this period will be reduced from to 10 years.
Contrary to what many may believe, according to CIPO, there is no benefit to renewing your trademark registration before its date of expiration. CIPO has stated that if a trademark registration is renewed before it expires, and if the actual date for renewal was subsequent to the coming into force of the new law, the renewal period will be reduced to 10 years.
5. Registration of Non-Traditional Marks
In Canada, as it stands, except for words, phrases, logos or other visual designs, since 2012 it has been possible to register a sound or jingle as a trademark. Take as an example the famous Toys R Us jingle (“I don’t wanna grow up, I’m a Toys R Us Kid”), Intel’s iconic mnemonic chime, the roar of the MGM lion, or the startup chime of a Mac computer.
However, this too is about to change. The proposed changes to Canadian trademark law include a revision of the current definition of “trademark”. The new law will expand the definition to include “a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign”.
This new definition opens the door to a whole new class of marks known as “signs” which can now be protected as a trademark, making it possible to protect a variety of non-traditional marks. Once the new laws come into force, companies and entrepreneurs will be able to file trademarks for signs such as a smell, a texture, a taste, a hologram or even a moving image.
This change is interesting for Canadian entrepreneurs since they will now have the possibility of registering more types of marks than before, but also for non-Canadian businesses who will be able to register as trademarks in Canada signs that are not authorized for registration in other countries.
Wondering when these new changes will take effect? So are we! Stay tuned with the Legal Logik blog. We’ll keep you apprised with exact dates once they are announced.