Changes to Canadian Trademark Law, Eh?

Those of us with clients who do business in Canada have been watching with interest as Canada prepares to implement significant changes to its trademark laws. The new Trademarks Act (no more Trade-hyphen- marks!) was enacted in 2014, it has been inching toward implementation ever since. The Trademarks Office forecasts that the new regulations will be in force by early 2019.

From a U.S. perspective, the new act includes several revisions that provide enhanced protections, and help align Canada with trademark practices in other jurisdictions, including the U.S. Of note:

• Canada will, at long last, become a party to the Madrid Protocol, allowing for more streamlined and cost-effective filing and maintenance;

• The Declaration of Use requirement and the registration fee will be eliminated;

• The Nice Classification of goods and services will be adopted, which will also allow for more streamlined international filing programs;

• Canada will allow for the protection of nontraditional marks to include anything that can function as an indicator of source, such as colors, three-dimensional shapes, sounds, scents, textures, and the like;

• It will finally be possible to divide applications in Canada, which is a useful tool during the prosecution phase.

On the down side, Canada has been a unique and cost effective jurisdiction for many years — due to the relatively low cost of filing (which will no doubt increase due to per-Class filing fees), and the 15 year registration term (which will now be reduced to the more typical 10).

Nevertheless, our neighbor to the north remains an important market for many U.S. businesses, and the upcoming changes to the trademark practice will help align trademark filing and prosecution strategies across North America.

This article appeared in the February 2018 issue of MarkIt to Market. To view our past issues, as well as other firm newsletters, please click here.