Back in 2014, Canada ratified the adoption of three international trademark treaties that will impact aspects of domestic Canadian trademarks law. These are the most significant changes made to Canadian trademarks law in 50 years. The implementation of these treaties into domestic law has been slow. (And by that we mean: sloooooow). Four years later, we are still waiting for the full integration of these new laws – but we are advised that they are anticipated to come into force in 2019. Interestingly, brand trolls that are speculating on the impact of these laws, are already taking advantage of the anticipated changes, to the detriment of legitimate brand owners.
What are the International Treaties?
Domestic trademarks law is shaped by international trademark treaties, should countries ratify those treaties. For better or worse, to date, Canada has been an outlier to the most significant international trademark treaties: Nice Agreement, Singapore Treaty and the Madrid Protocol. In 2014, Canada finally decided to become fully integrated with the international trademark regime, by ratifying these international treaties.
What are the Significant Changes to Canadian Trademarks Law?
Some of the imminent changes are substantive, whereas others are administrative. Below is a summary of the anticipated significant changes:
1. Use will no longer be required as a basis of registration, nor a requirement for registration.
2. The definition of what constitutes a trademark will be widely expanded to include scent, texture, taste, and hologram.
3. Similar to the US, it will be possible to divide trademark applications.
4. The registration term will be reduced from 15 years to 10 years.
5. Third parties will be able to file Letters of Protest during the examination stage of a trademark application.
6. Incremental government fees per class of wares/services will be incurred.
What’s the Impact?
Canada has always been a use it or lose it jurisdiction. Currently, you can only obtain a trademark registration if you are able to attest to use of the trademark, either domestically or internationally. This requirement acted as a safeguard to ensure (for the most part) that those trademarks that register in Canada are actually being used in Canada. With the upcoming removal of the use requirement, this means that brand trolls can now register trademarks in Canada with no threshold to demonstrate use of the trademark. Essentially, it enables brand trolls to seek to register trademarks that are owned by legitimate trademark owners and hold those trademarks hostage, blocking out the brand owner from registering the trademarks. In fact, we are already seeing some brand trolls file Canadian trademark applications in anticipation of the full phase in in 2019, where there will be no requirement to file a Declaration of Use at the final stage of the registration process.
This will place a greater importance on trademark monitoring, trademark watch services and trademark enforcement proceedings than before. Through your trademark lawyer, it is possible to place watches to see if any third parties are filing identical or confusingly similar trademarks as your brand. Similarly, greater emphasis will be placed on expungement proceedings and opposition proceedings that are trademark enforcement proceedings that are embedded within the trademark registration process.
How Can you Best Prepare?
Currently, the Trademarks Office charges one government fee, regardless of how many classes are included in the application. With the 2019 phase in, the Trademarks Office will charge additional government fees for each class of ware and/or service. So, it makes it cheaper to file trademark applications now, especially if you are filing multi-class applications.
With the 2019 phase out of the use basis, brand trolls are targeting Canada. File your trademark applications sooner than later, to ensure that you are staking your claim and squeezing out opportunities for brand trolls to take your trademarks hostage.
Work with your trademark lawyer to strategize trademark watching and monitoring services to ensure that you are guarding against brand trolls.