Since March 17, 2019, Canada has officially become a member of the Madrid Protocol, the Nice Agreement and the Singapore Treaty. These treaties will be applicable in Canada from 17 June 2019. Following a long process of reform, Canada’s adoption of these texts was highly expected and profoundly amended the Canadian Trademarks Act.
The accession of Canada to the Madrid Protocol allows a harmonization of Canadian’s trademark law on an international level. With a single international application, Canadian applicants will now be able to file an application in more than 80 different countries. Applicants from a Member State of the Madrid Protocol will have the opportunity to designate Canada in their international applications for registration. This alignment on the international standard brings many changes to Canadian law, which has been duly amended (Bill C-31). Trademark owners will have to take this into account from June 17.
Thus, the classification of goods and services according to the Nice Classification becomes mandatory for all registration applications. The measure is applicable to new filings and unpublished pending applications. Trademarks already registered will be classified in this way when renewed.
In this respect, the term of protection of a trademark is reduced from 15 to 10 years for any trademark registered after the entry into force of these treaties in Canada. Any trademark with a renewal deadline of June 17, 2019 or later will have a renewal term of 10 years.
The Canadian Intellectual Property Office has also established a mechanism allowing a third party to bring to the attention of the Office information that affect the registrability of a trademark filing. This procedure determines whether a trademark is registrable. It is applicable only in three cases :
- if there is a likelihood of confusion with a prior trademark
- if there is a likelihood of confusion with a previously filed trademark
- if goods and services in the application for registration are identical or similar to an prior trademark.
Evidence of past use and written arguments will not be taken into consideration and the Office reserves the right to eliminate this practice in the event of abuse.
Moreover, an opposition to a trademark application may now be partial and only concerns certain goods and services designated by the application for registration. If the opposition is successful, the applicant will be able to keep his trademark application for the goods and services not covered by the opposition.
Finally, the mandatory declarations of use is removed and the registration of specific trademarks (olfactory, gustatory, etc.) becomes possible if the trademark is distinctive in Canada on the filing date of the application. Furthermore, it is no longer required to indicate whether a trademark filed in Canada has already been used in Canada or abroad.
Trademark owners are therefore encouraged to audit their portfolios of protected trademarks in Canada to understand the possible consequences of the new law. Moreover, Canada’s entry into the system of the international trademark is a tremendous opportunity to protect new brands in Canada: to be used without moderation!
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