Trademark Law

Trademark Canada

All you need to know about New Canada Trademark Law 2019

In the year 2014, the Canadian government proposed to legalize the Trade-marks Act. However, the trademark law will now undergo substantial changes after June 17, 2019. As per the report, all the changes will be done considering Bill C-31, The Economic Action Plan Act, No. 1, and Bill C-30 of 2016, which is related to CETA- Comprehensive Economic Trade Agreement.

It took a long time, but finally, the Canadian government is now implementing the new provisions. Recently, the government has issued the Regulations in the Canada Gazette. It was part of the process of enacting the new legislation. It is the final step before the implementation of the provisions. As per the report, the provision will have a solid impact on law related to Canada’s trademark. It has also stated that the alteration in the law will have a major effect on all stages of Canadian trademark life cycle. All the changes can be categorized into two major categories.

Major changes in Canada Trademark Law

Category No.1 – Main provision

1. Definition of a trademark

After June 2019, some new types of registrable trademarks will be issued. Those may include new textures, tastes, scents, and colors. Talking more about it, it will be for the first time, where the CIPO- Canadian Intellectual Property Office will evaluate the quality of the trademark applications submitted. Besides, the office will now ask for submitting proof of which can show the distinctiveness of non-traditional trademarks. Some experts have stated that such practice can make the process of trademark process complicate.

2. The Nice Classification system for goods and services

As per the latest changes, all the application submitted after 17th June 2019 will be evaluated under the Nice Classification system. The system is the part of Nice Arrangement, and now the Canadian legislation has adopted it. On the other side, the trademark applications which have been filed before the data will be suspended for the alteration. So, if you are going to file your trademark application, then follow the terms and conditions mentioned in the Nice Classification system. So that you can prevent delay or cancellation of your application.

3. Removal of the filling grounds requirements

After the latest alterations in Trademark Canada law, you don’t have to provide any reason to file a trademark application. If you are planning to use a trademark, you can now easily apply without mentioning any reason. Well, this is something quite good for people.

4. Change in claiming priority

After 17th June 2019, you can go for a priority claim based on your previous trademark application. The applicant’s country of origin will no longer be a major factor.

5. No need to submit a declaration of use

One of the most major changes that you will see in the new Trademark regulation is the elimination of the declaration of use. That means, from 17th June 2019, once you pay the registration fees, your application will be sent for examination. This will benefit the applicants as it eliminates the deadline and declaration of use related to the application.

6. Changes in application registration fees

From 17th June 2019, the registration fees for trademarks will be calculated following the number of classes of goods and services. As per the rule, the applicant will have to pay $300 CA for one class, and for each additional class, the applicant will have to pay a single government filing fee of $250 CA.

7. Dividing the trademark applications

The Canadian Trademark Law will give the applicant a right to divide the trademark applications. Following which, you will be able to split the trademark application in several classes and into different products and services. Later, you can combine the previously divided registrations.

This will be a great thing for the applicants, especially when the opposition has been filed against some of the goods and services. Now it will be possible to get a registration for products and services that were not included in the previous trademark application.

8. The Madrid Protocol

Canada has finally got access to the Madrid Protocol. With this, Canada now can be designated as a part of an international trademark application. It is expected that this will significantly boost the number of trademarks registered in the country.

9. No need to submit evidence of transfer requirement

From June 17, 2019, no document will be required to keep a record about the trademark assignment and transfer. Well, the trademark office can ask for such proof, but during the time of registration, you don’t need to submit such evidence. On the other side, there will be no need to associate the assignment or transfer with related trademarks.

10. Application registration and renewal terms

As per the new act, the trademark registration and renewal terms have reduced to 10 years from 15 years. As mentioned above, the fees for renew the trademark will be calculated based on the classes being renewed. As per the report, the renewal fees will be $ 400 CA for one class, and for each additional class, you will have to pay $125 CA. You will have to pay the new fee from 17th June 2019. Besides, the trademarks will be renewed must comply with the Nice Classification system.

11. Right to information about the existence of third-party rights to the Canadian office

The new trademark Canada 2019 law offers the right to information about the existing third-party prior rights to the Canadian Trademark Office during the application verification process. As per the report, the third-party prior was previously considered during the opposition proceeding. Well, it is said that it will protect the trademark rights and avoid opposition proceedings.

Category No. 2 Transitional provisions

The final date for implementing certain provisions is not yet fixed. That’s why provisions have been put in place.

1. Evaluation of quality of a trademark will apply to all the pending applications

As per the latest regulation, the trademark’s distinctiveness will be now evaluated based on the priority of the application. That means, all the applications which are submitted before 17th June 2019 will be tested for adequate distinctiveness.

2. Alteration in processing time

The processing time in some events, for example, provisional refusal of registration have been changed. However, remember that the processing time modifications apply only to refusals introduced after 17th June 2019.

3. Opposition’s ground will be applied to applications registered before 17th June 2019

For any opposition proceeding before 17th June, the office may request rounds for an opposition. The rules will be applied even if the opposition time expires. Talking more about it, the opposition can be based on the grounds on the deposit.

The trademark applications and after the new trademark regulation can be based on the fact that the applicants do not use or don’t want to use the trademark.

The primary aim of new Canadian trademark law is to ease the process of submitting the Canadian trademark applications and getting the trademark. The new rules will simplify the entire process of obtaining trademark protection in Canada.

However, some experts have stated that such changes can increase the risk of fraud from different third parties. Some people apply even though they want to use them. As per the report, all the changes will be implemented as the consequence of an Agreement between the United States, Canada, and Mexico. For more, you can prefer to go to Canada trademark search online to get more detailed information.

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