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Changes to Canadian Trademark Law and Practice  

UPDATES:

November 19, 2015: During IPIC's 2015 annual meeting this past October, representatives from CIPO gave a presentation entitled the CIPO UPDATE, wherein it was announced that the Singapore Treaty and Madrid Protocol, which are the main treaties impacting trademark practice, would be implemented in early 2018. Of course, as we have seen this projection could change again.

September 25, 2015: CIPO has announced that it will be accepting NICE classification information for goods and services starting September 28, 2015 for all new trademark applications. 

September 8, 2015: While the Canadian Intellectual Property Office (CIPO) has indicated that it will start accepting in the fall of 2015 applications classified according to the Nice Classification System (NICE), it has yet to commit to an implementation date.  

Further, it seems clear that its adoption will NOT supersede the legislative requirements of specificity and ordinary commercial terms, and there will be an additional requirement thereto.

Finally, CIPO has remained silent as to whether the adoption of NICE will lead to a per-class fee structure as is the case in other countries. 
 

June 16, 2015: The implementation of the new trademark system is being pushed forward to late 2016/early 2017 according to information found at CIPO's web site regarding its Forward Regulatory Plan 2015-2017.

March 05, 2015: Transitional provisions specify that any marks that are pending at the date of implementation that were filed based on intent to use in Canada can be registered without having to file a declaration of use for Canada. This can effect several  applications currently in prosecution, and any applications being filed in 2015 since they  will most likely fall under the new system by the time they clear the publication stage. This is somewhat speculative until CIPO commits to an actual implementation date. Please contact us should you have any specific questions about this or require further information.

November 21, 2014: CIPO has stated that implementation will not be before early 2016, as opposed to sometime in 2015 as previously stated. The text below has been updated accordingly.

Should you have any questions please feel free to email us or contact Richard Whissell directly.

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November 2014 

Major changes are coming to the Canadian trademark system, however many of the details have not yet been settled by the Government.  This bulletin provides details respecting the information available at this time. 

 Firstly, the changes are a result of a trade agreement between Canada and the European Union which entails joining the Madrid Protocol and implementing the Nice classification system and the Singapore Treaty. The changes are intended to take effect sometime in 2016, however the Canadian Intellectual Property Office (CIPO) has not specified an implementation date and transitional provisions are not yet known. Below we highlight some of the more important discussed changes.

 

 BASIS OF APPLICATION AND USE

The first and most significant change to Canadian trademarks practice is elimination of the requirement for a basis (such as intent to use, use in Canada, or use and application in the home country) for new applications. Related thereto, filing a declaration of use for an intent-to-use trademark will no longer be required to finalize registration.  We expect these changes will streamline the filing process as we will no longer require particulars of home registrations or certified copies thereof. Convention priority claims and use requirements in summary cancellation actions are unaffected.

 

NICE CLASSIFICATION OF GOODS AND SERVICES

Canada will finally adopt the NICE classification system for goods and services, which is currently in use throughout the world. This may result in a change in the government fee structure for filing costs, however further details are unknown at this time. It may also be necessary for older trademark registrations to have their goods and services re-classified under the NICE system at the time of renewal or at some other as yet to be specified time.

 

RENEWAL TERM REDUCED TO 10 YEARS FROM 15 YEARS

Ten year renewal terms will serve to comply with the Singapore Treaty. This will likely impact government renewal fees, however further details are unknown at this time.

 

DIVISIONAL APPLICATIONS

It will be possible to divide applications under certain circumstances, however the mechanism for this has not yet been made known.

 

WIDER ACCEPTANCE OF GOODS AND SERVICES DESCRIPTIONS

Canada recently integrated OHIM’s TMclass goods and services into its Acceptable Wares and Services Manual (link here http://www.ic.gc.ca/app/opic-cipo/wrs/dsplyPblcSrch.do)  in anticipation of implementing these changes. Of additional note, the word “specific” has been removed from proposed Section 30(a) of the Trademarks Act which governs the description of goods and services. The new proposed section recites the goods must be listed in “ordinary commercial terms” as opposed to the previous version which stated “specific ordinary commercial terms”. This change may result in the Office accepting a broader range of descriptions of various goods and services.

CHANGES IN EXAMINATION

Previously, the most common objections were based on a mark being a name or surname; clearly descriptive; or confusing with a registered or previously-filed trademark. Under the proposed legislation, Examiners will have a new ground to reject an application based on a lack of distinctiveness. In addition, there will be acceptance of alternate types of marks, such as smell, and distinctiveness objections may be applied primarily to the alternate types of marks.

 

CONCLUSION

As previously stated, there are currently few details respecting  how the changes will be implemented or any  transitional provisions related thereto.   We will provide further updates as they become available and we will do our very best to make the transition as smooth and seamless as possible.

We welcome any questions, comments or concerns that any of our clients may have. In the meantime, we thank our valued clients for their continued loyalty.

©2014, MacRae & Co.