Area of Law: Intellectual Property
Answer # 0314
New Trademarks ActRegion: Ontario Answer # 0314
On June 17, 2019 the new, amended Trademarks Act came into force.
To be more competitive internationally, Canada is modernizing its trademark laws to be in line with the international community. The new Act enables Canadian innovators to compete more effectively in the global market, as well as attract foreign investors to Canada. Specifically, Canada has agreed to join the following international trademark agreements:
- Singapore Treaty – relating to the Law of Trademarks,
- Madrid Protocol – relating to the Madrid Agreement concerning the International Registration of Marks, and
- Nice Agreement – establishes the International Classification of Goods and Services.
Main changes to the Act:
International Registration (IR): The Madrid Protocol allows Canadian applicants to apply for International Registration (IR) with any of the current 104 members covering 120 countries with a single application. Conversely, foreign applicants are able to designate Canada in their Madrid filing. This IR can reduce the cost and time of submitting separate applications where the applicant wishes to register in multiple foreign jurisdictions.
Protect distinctive marks: The new Act makes it possible for non-conventional marks such as tastes, smells, textures, distinctive colours and holograms to be protected.
Renewals: Trademarks need to be renewed every 10 years instead of the former 15 years.
Overcoming Examiner’s Objections: The new law allows applications to be split. This will help applicants overcome objections based on certain goods or services, or because of classification (or reclassification) issues.
Prior use requirement: The requirement to use the mark before registration has been abolished. Previously, the trademark (good or service) must have been used somewhere in the world (including Canada) before it could be registered in Canada. With the new Act, this is longer be necessary. The mark can be registered without prior use and the applicant will have a three-year immunity from being cancelled for non-use.
International Trademark Classification: In addition to describing the mark, the applicant must also select the class within which the good or service to be registered falls, from the classes designated in the International Classification system under the Nice Agreement.
Trade-mark spelling: Under the new Act, the hyphen in the word trade-mark has been removed.
Definition of ‘mark’: In the new Act, the word ‘mark’ is replaced with the word ‘sign’ which is separately defined as ‘a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign’.
Distinguishing guise classification removed: Distinguishing guises were trademarks that comprised the shaping of goods or their containers, or the mode of wrapping or packaging goods, the appearance of which distinguished the source or origin of those goods. The new Trademarks Act no longer includes a definition of “distinguishing guise”. Therefore, applications for distinguishing guises that were not advertised as of June 17, 2019 will require amendment. In particular, applicants must amend their application for a distinguishing guise to specify that the trademark is either (a) a three-dimensional shape, or (b) a mode of packaging goods. These are included in the Canadian Intellectual Property Office (CIPO) list of ordinary marks.
For more information about trademarks, visit the Canadian Intellectual Property Office website.
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