The Canadian trademarks regime will see major changes coming into effect on June 17, 2019. The last time our laws in this area underwent significant transformation was in the 1950s, so June 17th will be a significant day indeed.
The impact will be seen in two major respects:
1. Changes to domestic trademark filings; and
2. Implementation of the Madrid Protocol, whereby international filings can be made
Among the more significant changes to the domestic regime are:
- Adherence to an international system for classifying goods and services, whereby similar goods/services are “classed” (grouped) together
- Implementation of a per-class filing fee by the Canadian Intellectual Property Office (CIPO)
- A broadening of the types of trademark applications that will be accepted by CIPO, including acceptance of various kinds of non-traditional trademarks such as tastes and smells
- The elimination of the requirement to include information about whether or not a trademark has been used in Canada at the time of filing
- The elimination of the requirement to file a Declaration of Use prior to being able to obtain a registration
- The shortening of the registration term from 15 years to 10 years
As for the Madrid Protocol, this provides “one-stop shopping” in respect of countries which are Designated Contracting Parties. Thus, entities that are based in countries that are members of the Madrid Protocol can file a single trademark application covering other countries which are also members of the Madrid system. This avoids having to file individual applications in each market of interest.
Starting on June 17th, Canadian businesses can file trademark applications under the Madrid Protocol and designate other countries in which they are interested in obtaining trademark protection. The converse also applies, so that foreign businesses based in a country that is a member of the Madrid system can designate Canada as a country in which trademark protection is being sought.
Regardless of whether you are seeking to protect your trademark in Canada or other markets, it is important to seek advice from qualified Canadian trademarks counsel who can provide guidance on the most appropriate steps. At Hoffer Adler LLP, we are focussed on ensuring that your trademark strategy is tailored to your business goals. For further information, please contact Stephanie Chong at firstname.lastname@example.org.