Changes Coming to Canadian Trademark Applications in 2019

11.19.18

Since the enactment of the Canadian Trademarks Act in 2014, many of us with clients who do business in Canada have been expectantly waiting for the implementation of these significant changes in Canadian trademark law. We learned from our Canadian colleagues recently that these changes will come into force on June 17, 2019. 

Notably, on June 17, 2019 Canada will formally become a member of the Madrid protocol and will adopt the Nice Classification system, aligning the Canadian trademark system with many other countries and providing more consistency for those trademark owners who pursue protection internationally. Unfortunately, however, this change will likely increase the cost of filing in Canada as each Class may require a filing fee. The term for registration will also be reduced to 10 years, similar to the term of trademark registrations in the US. 

Of particular interest is the removal of ​“use” as a prerequisite to registration in Canada. Similar to trademark applications in China, once the new law is in force, Canadian applicants will no longer be required to specify in the trademark application whether the mark has been used in Canada, nor will applicants be required to provide details of any use or registration. This means Canadian applicants, and foreign applicants, will no longer need to actually use their trademark in Canada in order to obtain a registration. However, registered trademarks will be vulnerable to cancellation if the mark has not been used in Canada in the preceding three years.

While use will no longer be required for registration in Canada, the new Canadian law will likely make the examination process a bit more rigorous as it will allow Canadian examiners to object to a trademark in an application on the basis of non-distinctiveness. A comparable example of a descriptive trademark in the US. 

• Trademark