On September 28, 2018, the Canadian Intellectual Propriety Office announced that the modifications to the Trademarks Act and the new Trademarks Regulations will enter into effect in early 2019.
As a result of these legislative changes, Canada will be able to join the following three treaties concerning trademarks: the Nice Agreement, the Madrid Protocol, and the Singapore Treaty.
Among the notable changes to Canada’s trademarks regime, it will now be possible to:
- Register a mark in a foreign country from Canada via an international trademark registration system that exists between signatory countries of the Madrid Protocol.
- File an application without specifying a filing basis.
- Accelerate the issuance of the certificate of registration, because it will no longer be necessary to file a Declaration of Use for marks with a basis of proposed use.
- Register non-traditional trademarks, such as: a smell, a flavor, a texture, a hologram, a moving image, and (a) color-scheme(s). Certain kinds of non-traditional marks are already being accepted as trademarks or distinguishing guises, such as: a mode of packaging, a three-dimensional shape, a positioning of a mark, a color applied to a mark, and a sound.
- Divide the application before or after the mark has been advertised, in the Trademarks Journal.
- Merge registrations
- Declare more than one owner for the same application without having to specify the type of partnership between the owners.
- File an application for a certification mark without prior use in Canada.
Some of the less advantageous changes to the new regime include:
- The period of validity for a certificate of registration will change from 15 years to 10 years.
- There will be government fees for each class of goods and/or services, rather than one flat fee.
- Any existing registration with a renewal date after the changes take place will have to be modified to conform to the Nice Agreement.
- The end of associated trademarks.
We will be staying in touch in the coming weeks to provide forthcoming information concerning the new regime.
