Search Team

Search by Last Name

Significant Changes Coming to Trademark Law & Practice in Canada

June 17, 2014

Significant Changes Coming to Trademark Law & Practice in Canada

June 17, 2014

Home » Resources » Legal Alerts

Fish & Richardson Legal Alert
Update: Amendments to the Canadian Trade-marks Act received Royal Assent on June 19, 2014 and the bill is now law. Full implementation will take some time and is not expected to be complete until mid-2015.

The Canadian Parliament is expected to shortly approve a bill which will dramatically remake the Canadian trademarks system when the changes come into effect – which could be as soon as this Fall. Perhaps the most visible and welcome change for American practitioners will be the retirement of the Canadian spelling of “trade-mark” in favor of “trademark” – but many of the changes are substantive and controversial. Trademark owners should examine their portfolios now to make sure there are no gaps in coverage for Canada, in order to file any needed additional applications before the changes are implemented.

Key Changes:

  • Drop the requirement that an applicant claim use of a trademark in order to obtain a registration in Canada. While intended to simplify the registration process, this change will make it easier for pirates and squatters to register marks in Canada in bad faith. Early filing in Canada will need to be a much higher priority for new trademarks once the new law takes effect.
  • Canada will adopt the Nice Classification system for goods and services. This will eventually make searching and clearance of marks in Canada easier and more reliable, but it is anticipated that this may also lead to an increase in filing fees – another reason to accelerate any planned filings in Canada.
  • Other changes will bring Canadian law and practice into line with the requirements of the Madrid Protocol. Filing in Canada will be easier for foreign filers (although full implementation of the Madrid Protocol is not expected until sometime in 2015 at the earliest).
  • Renewal term will be shortened from fifteen years to ten.
  • New rules will make it more difficult to register marks consisting of only sounds or colors.

These amendments are somewhat controversial because they do not come in response to calls from the brand-owner community or the trademark bar, and some of them – particularly the dropping of the use requirement – are likely to make life more difficult for brand-owners. Presumably intended to enable implementation of the Nice and Madrid systems in Canada, the changes go much farther and will require a careful review of every client’s trademark portfolio to make sure they are adequately protected in Canada before the floodgates are opened. We can assist clients in assessing their current trademark posture in Canada and developing strategies to make sure their trademark assets are protected under the new regime.

If you have questions about this legal alert or would like to learn more, please contact your Fish attorney.

The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.