Sweeping Changes to the Trade-marks Act (Canada)

Bill C-31 makes sweeping amendments to the Trade-marks Act (Canada), some of which will implement portions of the Madrid Protocol, Singapore Treaty, and Nice Agreement into Canadian law, if passed. The Madrid Protocol creates an international system for registering trade-marks, the Singapore Treaty provides a common international standard for trade-mark registration procedures and the Nice Agreement provides an international standard for classifying goods and services for registering trade-marks and service marks. Together, these treaties will have the effect of bringing Canadian trade-mark law and practice more in line with international standards once legislation is passed to implement their terms.

Some of these key changes to Canadian trade-mark law and practice include:

Expanded Definition of “Trade-mark”

The definition of a “trade-mark” will be expanded to include more types of non-traditional marks, including 3-dimensional shapes, holograms, moving images, sounds and textures.  However, applicants should be prepared to provide evidence of distinctiveness for such non-traditional marks as of the date of filing under the new legislation.

Nice Classification

Canada will adopt the goods and services classification system under the Nice Agreement, which is currently in use in other jurisdictions, such as the USA and EU. In addition to defining your goods and services in ordinary commercial terms, you will also need to identify them by class when you file your application.  We anticipate that the more classes you have in your application, the higher the filing fees will be.  You may wish to file your trade-mark applications in Canada now and take advantage of the current modest filing fee.

Divided Application

Applicants will be able to divide applications mid-stream which will be helpful in situations where the Trade-marks Office or an opponent takes issue with only part of an application, allowing the uncontested portion to proceed through to registration in a separate application.

Reduced Renewal Term

The current term of a Canadian trade-mark registration is 15 years and it can be renewed indefinitely.  This term will be reduced to 10 years which will result in additional renewal fees over the same period of time.  If you can, renew your trade-mark registration now to take advantage of the 15 year term since you can currently renew your trade-mark registration up to 1 year prior to the renewal deadline.

Conclusion

While the amendments to the Trade-marks Act proposed under Bill C-31 have received Royal Assent, it is not clear when they will become law.  In anticipation of these changes, now is the time to review your current and proposed trade-mark portfolio.