As 2018 begins, the countdown to the implementation of Canada’s new trademark law begins. Bill C-31 of 2014 is expected to 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 take 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 processes. This will make the registration process easier, potentially faster, and in some cases less expensive. However, new changes also create new challenges. There are some key steps you can take in the months before the new laws come into effect to take advantage of existing Canadian trademark laws and prepare your brand for the upcoming new laws.
(1) Search immediately to determine trademark availability
Canada will not be the first country to adopt new trademark laws. After the new law comes into effect, the use of trademarks in Canada will still be a key factor in determining the priority of trademark rights. However, once a new application using the information begins, 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) File immediately to avoid being asked for new evidence
The new law will include a requirement to file a sound mark to prove distinctiveness, whereas currently it can be registered and filed without this restriction. In addition, the examiner may raise an objection on the basis that "the mark is not distinctive." Although it is unclear under what circumstances a registration objection would arise and in what form proof of uniqueness would need to be submitted, this requirement would undoubtedly increase the cost of the applicable application process.
(3) Apply for a trademark immediately to obtain the benefits of registration in the country of origin
The existing Trademark Law stipulates that a trademark applicant who has registered a trademark in his country of origin (outside Canada) will enjoy some preferential rights when registering in Canada, if the trademark meets the following characteristics:
is the name of a product or service
belongs to the category of first or last name
Although evidence of distinctiveness is required in order to register a trademark, the evidence required for a trademark registered in the country of origin is less demanding. The new law does not include this benefit.
(4) Review investment portfolio to ensure important brands are protected
For use or proposed use in Canada, the Canadian registration application for a mark embeds the definition of "trademark" in the new law. However, it is not required:
Clearly state the intention to use the mark or the date of first use of the mark
or submit a statement of use before the proposed mark is registered.
There are concerns that the new system will be more attractive to people who register trademarks 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 a portfolio review before the new law comes into effect and ensure that important brands are protected before the new trademark law comes into force.
(5) Implement observation to oppose other applications
Under the new law, observation services will be even more important in newly filed trademark applications. Applications will be easier and faster since using trademark information is no longer included in the application process. It is necessary to be alert to competitors and applicants that 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 proceed with the cancellation procedure if the trademark is not used after three years of trademark registration.
(6) Apply now to save costs
Currently, trademark applications in Canada are reasonably priced, and the application fee will not be affected by the number of goods and services included in the application. Along with the Nice Agreement system, the new law will introduce tiered fees. Submitting your application now will reduce trademark costs for brands of multiple goods or services.
The new trademark law will bring benefits to brand owners around the world, including:
The ability to file using the Madrid Agreement; the registration process in Canada will be simpler, fastest and, in some cases, It's cheaper.
However, by considering the six key strategies and planning above now, it will be possible to take advantage of some of the benefits of existing laws and maximize preparation before new laws are implemented.