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Changes to the Canadian Trademark Regulations

May 21, 2018

The Canadian trademark regime is about to undergo significant changes in the coming months. The changes are motivated primarily by a desire to modernize the Canadian IP system by joining several international treaties, namely the Singapore Treaty on the Law of Trademarks (Singapore Treaty), the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol), and the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement). The Canadian government has proposed new Trademarks Regulations designed to facilitate Canada’s accession to these treaties.

Some of the key expected changes in the Regulations include:

• Implementation of the Madrid Protocol: Canadians can apply for international registration of a trademark, by first filing a “basic application” or securing a “basic registration” in respect of the trademark with the Canadian Intellectual Property Office (CIPO). In turn, foreign applicants filing for international registration can designate Canada as one of the countries in which protection of a trademark is sought, and an application would be deemed to be filed for registration of the trademark in Canada.
• Types of registrable trademarks: The Regulations open the door to a wider range of trademarks (e.g. three-dimensional shape, color, sound, hologram, etc.) which may be accepted for registration. Departing from the strict requirement for providing a “drawing” of a trademark, applicants need only provide a “representation” or “description” that clearly defines the trademark.
• Use requirement: Use is no longer a prerequisite to registration in Canada. Applicants are no longer required to identify a date of first use, provide details of use and registration abroad, or submit a “declaration of use” of a trademark. Trademark use remains a central tenet of the Canadian trademark registration regime, and will be enforced through administrative proceedings (e.g. oppositions, objections, section 45 cancellation proceedings). 
• Term and renewal:  The term of a trademark registration will be reduced to 10 years (from 15 years) for those registrations that are issued after the coming-into-force date of the proposed Trademarks Act. A registration can be renewed only during a period that begins six months before the term expiration date and ends either six months after that date or two months after the date of a renewal notice sent by the Registrar.
• Divisional applications: Applicants can split their application into two or more divisional applications (dividing the original goods or services among the applications), which may allow them to continue with registration of non-contentious goods or services. Once divided, a divisional application is treated as independent from the original application. The Regulations do allow a divisional application to, under certain conditions, be merged back into the registration that resulted from the original application.
• Fees: The trademark application filing fee will include a fixed fee for a first Nice class of goods or services, plus a new fee per each additional class of goods or services found in the application at the time of filing. The proposed Regulations introduce a fee per Nice class at renewal.

The proposed regulatory text is expected to be finalized in fall 2018 and be in force early 2019.