Area of Law: Intellectual Property
Answer # 0314
New Trademarks ActRegion: Ontario Answer # 0314
The new Trademarks Act received Royal Assent on June 19, 2014. The new Act will come into force once the regulations have been updated to reflect the changes made, and once new IT systems have been developed to support the new filing procedures. It is anticipated that the new Act will be proclaimed into force in 2019.
To be more competitive internationally, Canada is modernizing its trademark laws to be in line with the international community. It is expected that the changes will enable Canadian innovators to compete more effectively in the global market, as well as attracting 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 will allow Canadian applicants to apply for International Registration (IR) with any of the 92 countries that are currently members. Conversely, foreign applicants will be 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 will make it possible for non-conventional marks such as tastes, smells, textures, distinctive colours and holograms to be protected.
Renewals: Trademarks will need to be renewed every 10 years instead of the current 15 years.
Overcoming Examiner’s Objections: The new law will allow 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 will be abolished. Currently, before an application can be registered, the good or service must have been in use in Canada. With the new Act, this will no longer be necessary. The mark can be registered 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 will have to select the class within which the good or service to be registered falls, from the classes designated in the International Classification system.
Trade-mark spelling: Under the new Act, the hyphen in the word trade-mark will be removed.
Definition of ‘mark': In the new Act, the word ‘mark’ will be 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: 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. However, the new Act provides that a trademark registration will not prevent a third party from using any utilitarian feature embodied in a trademark. Therefore, the Court may expunge a trademark registration by including as a ground for cancellation that the trademark registration is likely to unreasonably limit the development of an art or an industry.
For more information about trademarks, visit the Canadian Intellectual Property Office website.
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