Canada: New Trademark Laws Go Into Effect

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On June 17, Canada implemented long-awaited changes to its trademark laws. These updates are designed to modernize Canadian trademark practice and bring Canada more in line with international practice. Businesses with brand interests in Canada will want to be aware of these important changes, the most significant of which are described here.

Madrid Protocol: Canada has now acceded to the International Registration system, known as the Madrid Protocol, joining 100+ member countries around the world. The Madrid Protocol can simplify trademark filings and save money, allowing your U.S. attorney to initiate applications in multiple jurisdictions worldwide by filing one international application through the World Intellectual Property Organization (WIPO). Businesses that use a Madrid filing strategy will no longer need to file an independent national registration for protection in Canada.

Use Requirements: Canada has eliminated the requirement that actual commercial use of the trademark occur ‒ and be attested to ‒ prior to registration. Now, an application filed on an intent-to-use basis may proceed to registration without filing a Declaration of Use. For existing applications that were allowed under the old regime, they may immediately proceed to registration upon payment of the registration fees. This may save brand owners the costs of repeated Requests for Extensions of Time to file declarations of use. Note that Canada remains a “first-to-use” country, and unused marks are subject to expungement. Third parties may bring cancellation proceedings for nonuse three years after registration. Upon institution, the registrant will be required to show evidence of use within the preceding three years for goods and services covered by the registration.

Length of Term: While Canadian trademark registrations were previously valid for 15 years, the length of term for new registrations has been reduced to 10 years.  For existing registrations, the next renewal term (and subsequent renewal terms) will be for 10 years rather than 15.

Nice Classification: For new trademark applications, goods and services must be classified according to the Nice classification system. Existing registrations will need to have their goods and services classified prior to their renewal.

There are a number of other amendments that also came into effect last week, including updates to the Canadian Intellectual Property Office’s fee schedule. 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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