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.
Under the new legislative scheme, trademark registrations will issue upon the expiry of the opposition period. The transition provisions provide that applications which have been allowed at the implementation date can issue to registration upon the payment of the final registration fee, and so no Declaration of Use will be required. CIPO may re-assess outstanding allowance notices following the initial rush after June 2019, and may issue a registration fee notice, thereby shortening any existing deadlines to six months. The Nice classification will not be required for these trademarks prior to issuance of the registration.
If a trademark has been advertised for opposition prior to the implementation date, the Registrar will not be able to require that evidence of distinctiveness under the new Act be submitted.
All applications that have not been advertised by June 17, 2019 will be subject to most of the provisions of the amended Act. If they have already been examined, they will be re-assessed to ensure that they meet the registrability requirements of the amended Act. All claims to registration (use in Canada, use and registration in the country of origin, etc.) will not be included in advertisements after the coming into force date, and no certified copies will be required be filed after that date. Applications will be re-assessed for inherent distinctiveness and applicants will not be able to claim the benefit of Section 14. Applicants will need to adhere to the Nice classification system before advertisement, and all information relating to associated trademarks will be removed from all applications and registrations. If an application has not been advertised, the application can be amended to add a statement that the applicant wishes the trade market to be registered in standard characters if the trademark remains substantially the same. The applicant can also add a statement as set out in section 30(g) of the amended Regulations to include a description of a non-traditional trademark.