Canada IP laws: Ringing the changes
In the last few years, Canada has taken steps to implement a number of international IP treaties. In addition, the country has made several amendments to its laws on its own initiative. As a result, the patent and trademark landscape has a very different look.
Trademarks
Canada’s act and regulations are now in line with the requirements of the Singapore Treaty, the Madrid Protocol and the Nice Agreement. Changes include:
Filing
New applicants must pay government fees based on a per-class structure.
A basis of use is no longer required to obtain a Canadian trademark registration. Applications filed under the new regime will proceed directly to registration, with no allowance stage.
Applications filed prior to June 17, 2019 still require the payment of a registration fee, but the Declaration of Use is no longer required for proposed use applications.
Classification
The statement of goods and services for new applications and applications pending, but not advertised, prior to June 17, 2019 must be classified according to the Nice Classification System.
The Canadian Intellectual Property Office (CIPO) will begin issuing notices requiring the goods and services of existing, unclassified, registrations to be classified. Trademark owners will have six months from the date of the notice to comply.
Distinctiveness
New and pending applications are also being examined/re-examined for distinctiveness.
Examples of inherently non-distinctive marks include geographic locations, one- and two-letter or number trademarks, and laudatory words or phrases.
Term of registration/renewal
The term of registration has been shortened to 10 years.
Divisionals
A pending trademark application or existing registration can now be divided. Dividing an application may allow applicants to overcome objections during examination or oppositions, permitting the original trademark application to proceed to registration in association with any non-objectionable/non-contentious goods and services.
Madrid filings
Canadian applications can now form the basis for an international registration filed through the Madrid Protocol. Conversely, Canada can also be selected as a designate for Madrid filings that originate from member countries.
