Canada will be making substantive changes to its trademark laws. The Canadian Intellectual Property Office has confirmed that it now plans to implement the amendments to the Trademarks Act in early 2019 and has just released the proposed changes to the Regulations which are required in order to facilitate the implementation of the amendments.
Consultations on the draft regulations will be open until July 21, 2017 and more information on the process, including a copy of the draft Regulations, is available here.
These changes include not only accession to the Madrid Protocol, the Singapore Treaty and adopting the Nice Agreement, but will also remove all use requirements at the time of registration.
It is important to review cases on an individual basis, keeping in mind this 2019 implementation date. Until this occurs, applications relying on “proposed use in Canada” will continue to be registered only after a Declaration of Use is filed. In some cases, applicants have been obtaining extensions of time on applications on the basis that the new trademark law will permit registration for all goods/services, regardless of use.
Once an application is allowed, the Trade-marks Office currently permits extensions of time typically in six month increments, totaling three years from allowance, or six years from the date of filing, whichever is longest.
In rare cases, the deadline can be extended with special circumstances. If that deadline will expire before the 2019 implementation date, an applicant will have to make a decision on how to proceed. If there will be no use at all in Canada by this deadline, the applicant should file a fresh application. Indeed, in this instance, if the applicant is fairly certain that use will not commence by this deadline, we would certainly recommend filing a fresh application at this time as this will allow the applicant to maintain their rights and avoid the risk of a problematic intervening application. If there has been or will be use on some of the goods/services set out in the application by this deadline, the applicant has the option of filing a Declaration of Use covering those limited goods and services, file a fresh application, or both.
For those matters that also rely on a foreign registration basis, the applicant will want to review the situation and decide whether it is prudent or advisable to proceed at this time to registration under this basis only.
Finally, the Canadian Intellectual Property Office has confirmed that with the upcoming adoption of the Nice Agreement in 2019, all new applications will be required to pay a filing fee per class. Currently, there is only one single application filing fee, regardless of the number of goods, services or classes.
Once the new law comes into force in early 2019, an applicant will be required to pay separate government class fees, which could become expensive for applications that include a large number of goods and services covering a wide variety of classes. As such, strong consideration should be given for filing new applications at this time, especially for trademarks that cover multiple classes.
For more information, contact Eric Devenny.