May 24, 2019

Coming Soon: Key 2019 Canadian Trademark Change Drops Proof of Use Requirement

By: David NewmanChair of Gould & Ratner's Intellectual Property Practice and Matt ThurlowChair of Toronto-based Loopstra Nixon's Intellectual Property Practice

Amendments to Canada’s Trademarks Act will come into effect on June 17, 2019 (the “coming into force date”, or “CIF”). Also the Canadian Intellectual Property Office (“CIPO”) will be temporarily deactivating all online services for several days prior to June 17 – so plan in advance for electronic processing before the CIF (or be prepared to make paper filings, where possible).

The changes are aimed at bringing Canadian practice more in line with most of the world. A significant change is that registration/ issue fees will no longer apply, with all fees payable on filing. Also, notably, no claimed pre-filing use dates or attestation to pre-registration use will be required to secure registration. Filings for a further range of non-traditional marks will also be possible, including taste, scent and texture. New opposition grounds will apply after the CIF including bad faith filing, which appears aimed at curtailing trademark squatting resulting from no “use” requirement.

On that note, there can arise concerns of a party, such as a troll, seeking to camp on a trademark in Canada. As such, it may be advisable to promptly file a Canadian trademark application. For example, if you have a US or other trademark for a service or good and have future plans to expand the branding into Canada (but no current use in Canada), it may be helpful to file to register the trademark in Canada.

Filing before June 17, 2019 will allow for payment of lower filing fees (CA$250 for the entire listing of goods/services vs. class-based fees detailed below). Even after the changes in practice, filing may be advisable to limit the possibility of squatting, which may necessitate more costly opposition or cancellation proceedings. Further, it may be advisable to monitor Canadian trademark applications advertised for opposition to ensure timely action may be taken if parties attempt to act as trademark trolls.

Further details and implications of the changes are provided below.

Canadian applications filed on or after June 17:

Filing grounds (e.g. date of first use) will no longer be required and no claim of use will be needed to secure registration. Applicants may file if they are using, or propose to use, and are entitled to use their marks in Canada.

Classification and class fees will apply to all applications filed on or after the CIF. Government filing fees will be CA$330 for the first class, and CA$100 for each additional class.

Canadian applications filed before June 17:

Any application that had not been approved for advertisement as of April 18 will be reassessed after the CIF. Examiners may reexamine applications for compliance under the amended Act. For example, with new distinctiveness criteria and classification of goods and services.

Any application advertised before the CIF can be opposed based on current opposition grounds, including any application advertised before June 17 with an extension to oppose that expires after the CIF.

Applications advertised after the CIF will be subject to opposition on amended grounds, which include “bad faith filing” in addition to existing registrability, entitlement and distinctiveness grounds.

As of the CIF, advertisements will not display filing grounds, and errors in filing grounds will generally not form a ground of opposition.

After CIF classifications (similar to the USPTO) will be required. But before CIF classification will not be required for any application already advertised by June 17. However, CIPO may require classification at a later date.

Filing of certified copies of foreign registrations and declarations of use will not apply after the CIF.

Allowed applications may issue solely upon payment of the registration fee, regardless of the original filing basis (declarations of use will not be required).

Any registration that issues up to June 16 will have a 15-year term (as opposed to 10 years for post CIF applications). If an application has been allowed, it is recommended to process registration requirements before the CIF to take advantage of a longer term. That may mean dropping a proposed use claim, if other filing grounds included use in Canada, or use and registration abroad. Alternatively, if the mark is not in use on all of the goods/services of interest, the applicant can wait until after CIF so that the filing of a declaration of use is not required (and balance this with the shorter 10-year term).

Renewals processed before June 17:

Classification of registrations is not required for renewal before the CIF. However, CIPO may require classification of goods/services at a later date.

The current renewal term is 15 years. That term will apply to any registration due for renewal up to the CIF. Also, any registration due for renewal before the CIF, but renewed in the grace period after June 17, will issue for a 15-year term.

A single government renewal fee of $350 CA is payable until the CIF, regardless of the number of classes of goods/services. It is recommended, if possible, that multi-class registrations due for renewal after the CIF be processed before June 17 to take advantage of lower fees. While that will not impact the renewal term (all renewals due after the CIF will have a 10-year term), it will result in cost savings for multi-class registrations.