06 June, 2014
Spruson

Be aWARES, Trade Mark SERVICES in Canada Are Changing

Be aWARES, Trade Mark SERVICES in Canada Are Changing

There are going to be some big changes to trade mark services (or trade-marks for our Canadian colleagues*) in Canada. On 28 March 2014, the Canadian government introduced the Economic Action Plan 2014 Act as part of a budget Bill.  This Bill includes major changes to the Trade-marks Act 1985.

We outline below a brief summary of the tabled changes.

A ‘Nice’ Change

Canada will be adopting the Nice Classification system – the International standard for classifying goods and services covered by a trade mark application/registration, which is used by more countries in the world.  Previously, Canada used a system known as ‘wares and services’ and a full listing of the wares and services were contained within one of the groups; wares and/or services.  Under the Nice system, these are divided into separate classes, depending on the relevant goods or services.

This, together with other changes, will open the door for Canada to ascend to the Madrid Protocol, opening the way for brand owners to designate Canada form an International Registration.

The unknown factor at present is whether Canada will adopt a ‘per class’ filing fee in line with the practice of most Trade Marks Offices around the world.  If so, this will result in higher fees for filing a trade mark application in Canada.

Divisional Applications ‘Pout-ine’

As a result of the adoption of the Nice system, applicants will be able to file for divisional applications, leaving potentially problematic goods or services in a ‘parent application’ in order to secure registration of the trade mark in relation to the problem-free goods and services.

Not as delicious as the chip, gravy and cheese combo (Poutine), but possibly useful for brand owners seeking to register a broad range of goods and services.

‘Curling’ the Use Requirement at Filing

Even if filing does become more costly, there is good news for brand owners with the proposed new law doing away with the need to identify a date of first use in Canada, and/or a date of use and registration in other jurisdictions.  These simplifications should serve to make the registration process more streamlined and cost effective.

Of course, the requirement to use a trade mark once registered remains.  If a trade mark is not used for the goods and services covered under the registration, it may be vulnerable to removal from the Register.

‘Beavering’ Down Registration Terms

Currently a Canadian trade mark registration lasts for 15 years before a renewal payment is due.  The proposed law will shorten this period to 10 years, in line with International standards.  It may be advantageous for brand owners with renewals due shortly to renew under the current law and benefit from the extra 5 years.

These changes are only in the form of a proposed Bill and are not yet law, so watch this space for further updates.

*The new law also amends the term ‘trade-mark’ to ‘trademark’.


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