As 2018 begins, the countdown to the implementation of Canada’s new trademark law begins. It is expected that Bill C-31 of 2014 will be fully implemented in early 2019. The Madrid Protocol, the Nice Classification for Similar Goods and Services, and various other changes to Canadian law and practice will come into full effect.

An important change is that The regulations eliminate the requirement to provide information about use of a trademark in Canada during the application and registration process. This will make the registration process easier, potentially faster, and in some cases less expensive. However, new changes also create new challenges. There are key steps you can take in the months before the new law takes effect to take advantage of existing Canadian trademark laws and prepare your brand for the upcoming new laws.

1. Immediate search to determine trademark availability

Canada will not be the first country to adopt the new trademark law. Use of a trademark in Canada will continue to be a key factor in determining priority of trademark rights after the new law comes into effect. However, once new applications for use information begin, it will be difficult to determine which party owns the trademark rights. Therefore, conducting a trademark search before the end of 2018 may save you money.

2. Immediately file the evidence to avoid being asked for new evidence

The new law will include the requirement to submit proof of distinctiveness for sound marks, which can currently be registered and filed without this restriction. In addition, the examining attorney can raise an opposition based on the “lack of distinctiveness of the mark.” While it is unclear in what circumstances a registration opposition will be raised and what form the proof of distinctiveness will take, this requirement will undoubtedly increase the cost of the applicable application process.

(iii) Apply for a trademark immediately to obtain the benefits of registration in the country of origin

The existing Trademark Act provides that a trademark applicant who already has a registered trademark in his or her country of origin (outside Canada) enjoys certain preferential rights when registering in Canada if the trademark meets the following characteristics:

Be descriptive
Is the name of the product or service
Belongs to the category of first name or last name

Although one needs to show evidence of distinctiveness in order to register a trademark, the evidence required for a trademark that has been registered in the country of origin is not as high. The new law does not include this benefit.

4. Reviewing the portfolio to ensure key brands are protected

Use or offer for use in Canada, Canadian registration of the mark is embedded in the definition of "trademark" in the new law. However, it is not required that:

A clear indication of intent to use the mark or the date of first use of the mark
or filing a statement of use before the proposed mark is registered.

There are concerns that the new system will make registered trademarks more attractive to those who use them for illegal purposes. Whether this change will actually lead to an increase in such applications remains to be seen, but in order to rule out this danger, it is even more necessary to conduct portfolio reviews before the new law comes into effect and ensure that important brands are protected before the new trademark law comes into effect.

(V) Conducting observations to oppose other applications

Under the new law, the observation service in newly submitted trademark applications will be more important. Since the use of trademark information is no longer included in the application process, it will become easier and faster to apply. It is necessary to be vigilant against competitors and applicants who may be used for illegal business. Implement monitoring to prevent the above two types of registration applications, otherwise after your trademark is registered, you will need to file a liquidation procedure with the Federal Court, or you can only carry out the cancellation procedure for non-use of this trademark three years after the trademark registration.

6. Apply now to save costs

Currently, trademark applications in Canada are well priced, and the application fee is not affected by the number of goods and services included in the application. With the Nice Agreement system, the new law will introduce a tiered fee schedule. Filing an application now will reduce the cost of trademarking a brand with multiple goods or services.

Summarize

The new trademark law will bring benefits to brand owners around the world, including:
The ability to file using the Madrid Protocol; the Canadian registration process will be simpler, quickest, and in some cases, less expensive.
However, by considering the six key strategies and planning outlined above now, it will be possible to take advantage of some of the benefits of existing laws and maximize your preparedness before new laws are implemented.