What's New in Canadian Trademark Legislation?

Many individuals today believe that the intellectual property of a business can often be more important than the tangible assets comprising the business. The most common intellectual property are trademarks, patents and copyrights. Trademarks are words and/or designs(logos) used by a business to distinguish their goods or services from those of others. Simply put, patents deal with inventions and copyrights deal with literary, artistic and musical works. 

In June 2019 the federal government implemented major changes to the federal legislation regarding the registration of Trademarks. The most significant changes are as follows: 

1.     Canada has now adopted and acceded to the Madrid Protocol, the Singapore Treaty and the Nice Agreement, which impact Trademark applications in the following ways: 

(a)           Madrid Protocol - The Madrid Protocol offers businesses and innovators the possibility of obtaining trademark protection in up to 120 countries by filing one single international application, in one language with the World Intellectual Property Organization (WIPO). One overall payment is made in one currency, simplifying the application process and providing financial savings for those seeking to obtain and maintain protection for their trademarks internationally. 

(b)           Singapore Treaty - The Singapore Treaty simplifies and standardizes many formalities and procedures relating to the administration of trademarks. It establishes a maximum set of conditions that can be imposed on applicants, and makes procedures more user-friendly, more consistent internationally and less time-consuming for applicants. It also covers new types of trademarks, such as holograms, colour per se, and scent. 

(c)           Nice Agreement - A requirement for accession to the Singapore Treaty and the Madrid Protocol is the use of the Nice Classification, governed by the Nice Agreement. The Nice Agreement is a classification system used to categorize goods or services according to 45 general classes for the purpose of registering a trademark. The categories are harmonized across all member countries, making it easier to search and compare different trademarks and create classification consistency in trademark registrations.

2.     Prior to the recent changes, it was necessary to establish use of the trademark, in order for the trademark to be registered. As a result of the foregoing amendments, it is no longer necessary to establish use of the trademark in order to have the trademark registered. Many commentators are concerned that the removal of the “use” requirement from the Canadian Trademarks Act will encourage disreputable individuals to file trademarks in order to defeat legitimate business owners from protecting their brands by way of registration of their trademarks.

3.     Prior to the recent changes, the government fee to register a Trademark application was $250 and the application could specify any number of goods and services regardless of the number of classes. As a result of the foregoing adoption of the Madrid Protocol and Nice Agreement, the federal government fee to register a trademark has increased to $330 for one class of goods or services and $100 for each additional class of goods or services. An additional $100 fee is charged for offline applications

4.     Once your Trademark was formally registered, you were able to renew your Trademark for 15 years. The renewal period has now been reduced from 15 years to 10 years. The government fee charged for Trademark renewals has increased from $350 regardless of the number of classes, to $400 for one class of goods or services only and $125 for each additional class. 

For further information about the trademark changes or to register a trademark on your behalf, please do not hesitate to contact us.

Jarold Switzer (registered trademark agent)