The Times They Are a Changin’

The day has finally arrived – the new Trademark Act has come into force in Canada earlier this week. The new trademark regime brings significant changes with it.

We have summarized some of the key changes that are now in force that will affect new trademark applications and existing registrations.

  1. Trademark Definition – the definition of a “trademark” has been expanded which means applicants will have the opportunity to file new non-traditional types of trademarks. This includes smell, taste, texture, hologram, colour, three dimensional and moving trademarks.
  2. No Filing Basis/Declarations of Use are no longer required – applicants will no longer need to specify the basis for filing – meaning you do not have to identify the date of first use, or even if you are using the trademark. Likewise, applicants will no longer need to file a Declaration of Use to secure registration.
  3. Term and renewal fees – registrations will now only be valid for 10 years, rather than the previous 15 years. There will be additional renewal fees for existing trademarks, namely $400 for the first class of goods or services, and an additional $125 for each additional class. The owner of the registration will also now have to classify an existing registration’s goods and services according to the NICE Classification system when renewing (see below).
  4. NICE Classification and Fee-Per-Class – applicants now need to classify each of their goods and services according to the Nice Classification System. The government filing fee for an application is $330 for a one class application, and $100 for each additional class of goods and services added to the application.
  5. Madrid Protocol Filings – Canada is now officially part of the Madrid Protocol. Applicants can now file international applications with 118 different jurisdictions with the World Intellectual Property Association (WIPO).

There are several other changes that are now in force, including new objections to registrability, recordation of assignments and changes to opposition proceedings. Many of these changes will not only affect your applications and registrations, but existing strategies in managing your portfolio and enforcing against other third parties.

Wises is pleased to assist you with transitioning into the new modern trademark regime. We will be publishing articles on these changes in the upcoming weeks, so follow our Wises Insight blog for further information. If you are looking to file an application or have general questions, feel free to set up an appointment with us.