North America

In 2018, Canada announced a national IP Strategy recognizing the need for Canadian businesses to succeed in the “innovation economy”. While a traditional leader in R&D, science, and creation, the government’s proposed strategy sought to help Canadian companies do more to commercialize their IP, a critical asset in our “knowledge economy”. One of the key pillars of the strategy was updating and amending the legislation covering IP rights in Canada.

As part of this IP strategy, amendments to the Trade-marks Act (originally passed in 2014) will come into force on June 17, 2019 ushering in sweeping changes to trademark practice and prosecution. By adopting effective trademark strategies that takes these changes into account, business will be able to maximize the opportunities ahead.

To help our clients ride the upcoming wave of these legislative changes, we have put together a shortlist of the following factors to consider when reviewing your trademark strategy in Canada in 2019.

  1. Save Money by Filing Now: Currently, a trademark application is one flat-fee of $250 without consideration for the number of classes. Once the changes take effect, applicants will pay an initial fee of $330 for one class, with an additional $100 for each additional class. By filing now, there may be significant cost savings for applicants filing in multiple classes.
  2. Renew Registrations Now: Registrations up for renewal prior to June 17th may renew their mark in all classes for a 15-year term for $350. As of June 17th, renewals will only be for a ten-year term and registrants will have to pay an initial fee of $400 for the first class and $125 for every additional class they want to renew.
  3. No Longer Need to Indicate Use of the Trademark: In addition to a class-based fee system, the amendments to the Trade-marks Act will bring substantial changes to prosecution of trademark applications. For instance, it will no longer be necessary to designate a filing basis for the application and no declaration of use will be necessary for the application to mature to registration. In order to enforce the trademark, the owner will have to present evidence of use of the mark within the first three years of registration; however, applicants will be able to gain registration of a trademark in Canada without use anywhere in the world. In addition, applications may also be divided into multiple applications any time prior to registration.
  4. Expanded Trademark Protection: The changes to the Canadian trademark regime will expand the scope of what and how clients will be able to protect their marks in Canada and beyond.
    • Madrid Protocol: On June 17th, applicants will be able to take advantage of the international Madrid system allowing Canadian trademark application and registration holders to pursue international applications for their trademarks. The Madrid system allows applicants to file in one country and designate international jurisdictions for applications with the same goods or services. This may be a less expensive method to ensure brand protection across multiple jurisdictions.
    • Non-traditional Trademarks: Applicants will now be able to apply for a broader list of non-traditional trademarks, such as colour, scent, taste, and texture. These marks will be examined for distinctiveness and it is yet to be seen how the Trade-marks Office considers these applications; however, brand owners may want to consider what additional aspects or indicia of their branding (i.e. colours; store designs; etc.) and look are distinctive of their business.
  5. Prepare to Enforce Your Rights: With a likely increase in filings from international applications, combined with the rise of trademark “trolls” or squatters on the Register, brand owners can expect a more crowded field in Canada. Accordingly, brand owners should be prepared to enforce their rights against third parties who may or may not be operating in Canada. Amendments to the Act will allow mark owners to take preventative action to inform the Registrar of their prior rights to an application under examination provided they have a prior pending application or registration; however, brand owners should also be prepared for a rise in Opposition proceedings and other enforcement proceedings.

In view of the above, entrepreneurs, start-ups and established businesses alike should re-consider their trademark strategy taking into account the upcoming changes to the Canadian regime. By adopting an effective strategy that incorporates all of the above, business will be well-suited to take advantage of the opportunities ahead.

Authors

Mark D Penner
Partner
Toronto, ON
Nathan Haldane
Associate
Toronto, ON

© 2017 Fasken Martineau DuMoulin LLP The content of this website may contain attorney advertising under the laws of various states.

Related Articles by Firm
New transparency registry for all private BC companies in the offing
If the bill comes into force it will have far reaching compliance consequences for all private BC companies.
Privacy Commissioner of Canada reverses position on transfers of personal information for processing
The Commissioner has made a surprising reversal of its long-standing position on the transfer of personal information.
The Canadian gig economy: Embracing the future of work
Instead of quashing models that have the potential to empower the workforce, better protections for gig workers are needed.
A closer look at Canada’s budget
Fasken’s team examines important budget 2019 measures — some which made headlines, and others that should not escape notice.
Selected tax measures in Canada's 2019 federal budget
The budget contains significant proposals to amend income and excise taxes, while also providing updates on previously announced tax measures and policies.
OSFI issues advisory on technology and cyber security incident reporting
The Advisory reflects the fact that OSFI is very focused on this increasingly significant area of risk.
Health Canada pushes for safer medical devices
The announcements foreshadow significant near-term changes to Canada's medical device regulatory regime.
USMCA impact on communications industries
How the US-Mexico-Canada Agreement affects telecommunications, broadcasting and digital trade.
Surprise changes seek to modernise Canadian trademarks law and practice
This bulletin looks at key proposed changes to trademark law in Canada.
Time limits for retaining information about employees
Retention of personal information carries various obligations, particularly in terms of access to the information and confidentiality.
Further hurdles for regulatory approval of notifiable mergers in South Africa
On July 12, the Competition Amendment Bill was introduced in Parliament, substantially revising the earlier version of the Bill.
Hitting the sweet spot: Regulation of sweetened alcoholic beverages
Health Canada issued a notice of intent to restrict the amount of alcohol in highly sweetened alcoholic beverages.
Significant changes proposed to Canada’s AML/ATF regime
The Proposed Regulations are wide ranging and include a number of substantive changes as well as technical amendments.
Canada: Privacy commissioner issues key guidelines for consent and inappropriate data practices
Important guidance documents issued in respect of activities regulated pursuant to the Personal Information Protection and Electronic Documents Act ...
Cybersecurity risks for directors and officers
The cybersecurity field is ripe for affected stakeholders to test claims that directors and officers have failed to discharge their duties.
Cybersecurity Risks for Directors and Officers
Directors and officers in Canada face increased risk of personal liability and threats to job security in relation to cybersecurity...
Proposed changes to Canada's anti-money laundering and anti-terrorist financing regime
A consultation paper released in February could potentially have broad implications for Canada's AML/ATF regime.
Bill 148 Update: Scheduling and the three-hour rule
The Fair Workplaces, Better Jobs Act, 2017 makes significant changes to the Employment Standards Act, 2000.
Does your non-competition clause really protect you?
Or does it merely offer the illusion of protection? What you need to know about the validity and enforceability of a non-competition clause.
Canada: Selected Tax Measures in the Federal Budget 2018
Canada's 2018 Federal Budget contains significant proposals to amend the Income Tax Act and the Excise Tax Act while also providing updates on previously announced tax measures and policies ...
Expect the Intersection of Privacy and AI in 2018
We must consider how to regulate, or at least control, the use of artificial intelligence at different levels ...
Energy Licences and Approvals in Canada
Update on Directive 067: Eligibility Requirements for Acquiring and Holding Energy Licences and Approvals ...
Canada to Revise Tax Voluntary Disclosures Program
Effective March 1, 2018: New Regime will Result in Limited Relief for Certain Taxpayers Disclosing Errors and Omissions ...
Canada: New CASL Ruling
CRTC Provides Guidance on B2B Messaging and the Due Diligence Defence ...
Corporate Parent Liability: Litigation Risks for Resource Companies
Traditionally, parent companies have been considered legally distinct entities and thus immune from the actions of their subsidiaries, a concept described as the “corporate veil”. This position is now being challenged ...
Canada: No Duty to Consult Triggered by Omnibus Changes to Environmental Laws
In Canada (Governor General In Council) v. Courtoreille, 2016 FCA 311, the Federal Court of Appeal found that the federal government did not owe a duty to consult when it developed and implemented changes to environmental legislation through two omnibus bills ...
The Global Reach of Canadian Privacy Law
Federal Court Issues Landmark Ruling in Globe24h ...
Temporary Foreign Workers in Canada: Employer Compliance Rules
The regulations that govern applications for work permits provide a very strict framework for employers who hire temporary foreign workers in Canada ...
Canada is Open for Business
Trump and the Changing Political Landscape in the US ...
Primer on Procurement Rules in the New Canadian FTA
Fasken Martineau Releases Primer on Procurement Rules in the New Canadian Free Trade Agreement ...
Canada: Donald Trump, Paris and the Climate Policy Two­-Step
Will the U.S. withdrawal from the Paris Agreement fundamentally alter Canada's course?
China’s Priorities for a Free Trade Agreement with Canada
Analysis of Chinese language commentary, news media and academic studies, reveal some of China's top priorities for a free trade agreement with Canada ...
Canada: New Authorities under Vanessa's Law
On June 18, 2016, the Federal Department of Health published a Notice of Intent to amend the Food and Drug Regulations and the Medical Devices Regulations to implement key authorities under Vanessa's Law...
Canada: Consultation on New Health Regs for Self-Care Products
Health Canada is seeking consultation on new standards for self-care products, over-the-counter drugs, natural health products and cosmetics ...
Private right of action under Canada’s Anti-Spam Law
As of July 1, 2017, individuals and organizations will be entitled to institute a "private right of action" before the courts against those that contravene certain provisions of Canada's Anti-Spam Law ...
New Federal Consumer Protection Regime for Bank Customers
Canada: The government has introduced a bill which proposes to create a comprehensive federal consumer code and strengthen federal jurisdiction over provincial jurisdiction with respect to products and services of banks.
Canada: Alberta's Renewable Electricity Program
Alberta released details of the Renewable Electricity Program to accelerate the development of renewable power generation through a competitive bid process.
Certainly Uncertain: Construction Trusts after Iona in Canada
A recent decision clarifies the law regarding provincial statutory trusts in the insolvency context, particularly in the construction sector.
The Fight against Climate Change and the Overhaul of Canada's Environment Quality Act
A bill allows government to require a "climate test" from a project proponent.
Health Canada Is Cracking The Whip On Advertising Violations
On January 21, 2016, various hospitals, natural health product manufacturers, physicians and pharmaceutical companies found themselves specifically named by Health Canada in a published list of health product advertising complaints ...
Canada: New Strategic Plan for the Patented Medicines Prices Review Board
The Strategic Plan comprises a fresh vision, a revised mission statement and four new strategic objectives ...
Transport Canada Promises New Drone Regulations
Increase in popularity has had a direct effect on risks involved for the safe use of regular aircraft ...
N. America: Northern Gateway Pipeline
Province must consult and decide but may impose conditions
Canada: Tinkering with Title - Don’t Get Caught by Surprise
The Mining Amendment Act 2015 proposes a new electronic mining lands administration system in Ontario.
New Lobbyists’ Code Will Restrict Dealings with Canada’s Federal Government and Agencies
Canada's new Lobbyists' Code of Conduct will significantly restrict the activities of lobbyists and others seeking to influence federal decision making.
Righting a Wrong: Canadian Regulators Improve the Rights Offering Regime
Canadian regulatory authorities recently overhauled how prospectus exempt rights offerings are to be conducted going forward.
A change of role for a legal representative under the new Clinical Trials Regulation 536/2014?
The roles and responsibilities of the legal representative set out under Clinical Trials Directive 2001/20/EC are likely to change under the new Clinical Trials Regulation 536/2014.
Historic Court of Appeal Decision in Dunkin' Brands: Three Lessons for Franchisors in Canada
The Quebec Court of Appeal has specified the intensity of the franchisor's implied obligations in what is the most significant franchise case in Québec since 1998.
New Compliance Form and Fee for Employers of Foreign Work Permit Applicants in Canada
Employers whose foreign employees must apply for a work permit or extension should be aware of a new Compliance Form and Compliance Fee that they must submit before the person applies for the work permit in Canada.
Use of Trademarks As Metadata & #Hashtags in Canada
A recent decision of the Federal Court of Canada provides guidance on the proper use of IP in this digital world that brand owners need to know now.
Claims that Involve a Fixed Dosage and Schedule Can Constitute Patentable Subject Matter
The Canadian Intellectual Property Office has issued a revised guidance which provides clear instructions on how to approach medical use claims and determine whether such claims are eligible for patent protection.
The Application of the Bhasin Principle of Good Faith in Canada: An Early Example
A recent decision from the Supreme Court of British Columbia provides an early example of how courts will apply the general principle of good faith in Canada.
The TPP Agreement: A Canadian Business Perspective
The TPP will impact goods access and other aspects of Canadian businesses.
Foreign Corruption and the Integrity Framework in Canada: A Difficult Corporate Board Dilemna
Canada's Integrity Framework raises difficult choices for corporate board directors and management regarding voluntary disclosure of prior foreign corrupt activity of an acquired company.
Canada-EU Comprehensive Economic and Trade Agreement Negotiation Completed: Additional Protection for Innovative Pharmaceutical Products
If ratified, key intellectual property provisions in the Canada-EU trade pact will provide additional protection for innovative pharmaceutical products.
An Update on the Proposed EU Revisions to the Regulation of Medical Devices
The proposed European regulatory regime will merge the directives on Medical Devices and Active Implantable Medical Devices into a single regulation and wholly replace the current regulation on In Vitro Diagnostic Medical Devices.
UK FCA consults on requirements for reports on payments to government
While Canada does not currently have a reporting regime for payments to governments, a process is underway to ensure that a regime is implemented in the near future.
Trademark Use: an Important Shift in Canada
Bill C-31, which was given royal assent on June 19, 2014, will eliminate the requirement that a trademark be used in order to be registered in Canada.
Intellectual Property Protection - Industrial Designs
Many companies will consider the availability of and merits of seeking patent and/or trade-mark registration. However, one form of IP protection that is often overlooked is an industrial design registration.
Protocol to Amend the Canada-UK Tax Treaty
The Canada-United Kingdom Tax Convention was amended with the signing of a protocol on July 21, 2014. This article will describe some highlights of the Protocol and comment on the impact of these provisions on cross-border tax issues between Canada and the ...
The end of the Canadian "iPod Tax" saga
The "Certain Televisions Remission Order" confirms that, in fact, there is not now, and never actually was, "tax" on "iPod" imports to Canada.
Updating Canadian Trademark Filing & Registration Strategies
Here are some key trademark filing strategies for avoiding or minimizing the potential impact of recent amendments to the Canadian trademark landscape.
The Canadian insurance M&A environment
There have been a significant number of insurance company M&A transactions in the Canadian market in recent years, a trend expected to continue. Fasken Martineau DuMoulin have surveyed the acquisition agreements from these transactions and analysed ...
Merger control and foreign investment review in Canada
Fasken Martineau DuMoulin’s Huy Do and Jack Yu1 write that acquisitions of, or investments in, Canadian businesses can give rise to merger control and foreign investment reviews. ...
Related Articles
Related Articles by Jurisdiction
Canada: Intellectual Property Bulletin
The New Patented Medicines (Notice of Compliance) Regulations and Certificate of Supplementary Protection Regulations ...
Protocol to Amend the Canada-UK Tax Treaty
The Canada-United Kingdom Tax Convention was amended with the signing of a protocol on July 21, 2014. This article will describe some highlights of the Protocol and comment on the impact of these provisions on cross-border tax issues between Canada and the ...
OSFI issues advisory on technology and cyber security incident reporting
The Advisory reflects the fact that OSFI is very focused on this increasingly significant area of risk.
Latest Articles