Major Updates to Canadian Trademark Law: Canada Joins the Madrid Protocol and More

By Keelin Hargadon

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The Canadian trademark system underwent major changes on June 17, 2019.  The revisions to established trademark law bring the Canadian system closer to most other jurisdictions internationally by eliminating the use requirement for registration. Furthermore, Canada joined three key WIPO treaties: the Madrid System for the International Registration of Marks, the Nice Agreement, and the Singapore Treaty on the Law of Trademarks.  This article will cover most, but not all, of the changes to Canadian trademark law.

In agreement with the terms of the Singapore Treaty, Canada will increase the scope of marks considered eligible for protection, and will now recognize non-traditional marks such as shape, sound, smell, taste, texture, and holograms.  Trademark examiners will review applications for non-traditional marks for distinctiveness, and are able to request proof of distinctiveness of for non-traditional marks in Canada.

While Canada will remain a “use-based” and not “first to file” jurisdiction, applicants will no longer need to identify a date of first use in the initial trademark application.  In fact, no use information will be required in the initial filing, and no Declaration of Use will be required for registering a mark.  It should be noted that, despite these changes, use of the mark in Canada will still be a key factor in determining priority of rights to a mark.

With the adoption of the Nice Agreement, applicants are now required to classify their goods and services in accordance with the Nice Classification System in the initial application.  Existing applications and registrations will also eventually be required to convert to the Nice Classification System.  This update also includes an overhaul of the fee system, with filing fees increasing from $250 CAD to $330 for the first class and $100 for each additional class for new applications.

The term of a trademark registration is also changing from fifteen years to ten years for all registrations occurring after June 17th.  This change will increase the cost for mark owners because renewals are now required every ten years, and fees will be based on the number of classes instead of a flat rate.

Lastly, Canada is joining the Madrid Protocol, in what is likely the most anticipated update to Canadian trademark law.  Canada’s participation in the Madrid Protocol will reduce cost and streamline the application process for mark owners who desire to file internationally.  As of June 17th, Canada will be the 105th member state or international governmental organization (IGO) to join the Madrid Protocol.

What do these Changes Mean for Mark Owners?

Canada joining the Madrid Protocol is a definite improvement to the international filing strategy for mark owners.  In the past, mark owners seeking broad international protection were forced to maintain both an international registration and an additional Canadian registration.  Now, international portfolios should be easier to file and maintain through one central WIPO filing.

These changes may also present new challenges.  Elimination of the use requirement is expected to result in a vast increase in the number of trademark trolls.  A trademark troll is a person or entity that registers a mark with no intention of using the mark in commerce, but instead extracting payment from parties interested in commercializing the given mark.  In fact, filed applications that cover all 45 classes (i.e., a good general indicator of a troll application) increased dramatically starting in 2017.  The best explanation for this increase is that trademark trolls filed these applications with the hope that examination would not occur until after the change in the law.  Removal of the use requirement will also allow trademark trolls to utilize the Madrid system to register marks in Canada.

Actual use of a mark in Canada will remain a key factor in determining priority of trademark rights.  Marks will still be subject to non-use cancellation after three years.  Non-use cancellation proceedings for registrations that are at least three years old are relatively simple, and there is no duty to investigate whether the registration is in use before filing.  In addition, applications can be opposed on the grounds of bad-faith filing.

Recommendations for Mark Owners and Applicants

 Mark owners should consider whether existing marks should be protected for additional goods/services in Canada, even if not being used for those goods/services.  This same consideration should be made by brand owners when filing applications for new marks.  Lastly, trademark watch services should be employed to notify mark owners when confusingly similar marks are filed in Canada.  Early notification will allow mark owners to take advantage of opposition periods.