Canada’s trademark law is changing, and these changes will be coming into force on June 17, 2019. The sweeping changes which the new law will usher in are the most significant since the 1950’s. We therefore thought it was appropriate to take a deep dive into the new legislation, to briefly outline the main areas of change, and how trademark owners will be impacted.

What is a Trademark?

The Act has been significantly broadened to provide protection for non-traditional marks. Under the new Act, a trademark will be defined as a sign or combination of signs, or a certification mark. The term "sign" will further be defined as a word, a personal name, a design, a letter, a colour, a figurative element, dimensional shape, a hologram, moving image, a mode of packaging goods, a sound, scent, taste, texture, and positioning of a sign. The new definition of “standard characters” also provides broad protection where there is no claim to a particular font, size or colour.

Who Can Own a Trademark?

“Person" is now defined as two or more persons who, by agreement, do not have the right to use the trademark in Canada except on behalf of both or all of them.

Filing Requirements

Section 33(1) of the Act now sets out the limited prerequisites for obtaining a filing date for a new trademark application. If these requirements are not met, the Registrar must send a notice allowing a non-extendable term of two months to complete the application. If the defects are not cured, then the application will be deemed never to have been filed, but there will be no refund of any filing fees.

Filing Costs

The fee for filing a trademark application will now be $330.00 CDN plus $100.00 for each additional class.

Drawings

The concept of drawings has been replaced with the broader concept of “representation" or “description”, or both, that permits the trademark to be clearly defined. If colour is not claimed, the new Regulations specify that the representation must be in black and white.

Priority

Convention priority for a trademark application can now be based on a filing in any country of the Union of Paris 1883 other than Canada and is no longer restricted to the applicant's “home” country. There is also a seven day grace period available upon request for making a priority claim.

Divisional applications

Applications will be permitted to be divided in cases where objections have been raised regarding certain goods or services. For divided applications, a divisional application can itself be the subject of another division. Mergers of trademark registrations can happen only after registration.

Third party correspondence

Unlike the present situation, letters of complaint or protest will now be accepted by the Office.

Correction of Errors

With respect to the correction of errors, the Registrar will be given increased powers to correct errors in names and addresses and to correct its own mistakes, including withdrawing advertisements and correcting errors in registrations, provided that the correction is completed within six months. If a registration issues despite a request for an extension of time to oppose having been filed, the Registrar will be able to remove the registration within three months.

Assignments

The reference to “associated” trademarks will be removed in the new Act. It will therefore now be up to trademark owners to ensure that the assignment of the trademark does not negatively impact the distinctiveness of the trademarks.

If an assignment is filed by the applicant or registrant, no evidence will be required. If the assignment is filed by the transferee, evidence of the transfer will be required.

Destruction of Files

The Registrar will now be able to destroy file records for abandoned applications and expunged registrations after 6 years from the date of the abandonment or expungement.