Canada: Reform of the trademarks system into force on June 17, 2019

Canada: Reform of the trademarks system into force on June 17, 2019

by PGA

On June 17, 2019 the new Act and Rules will come into force in Canada, substantially modifying the national trademark system.

The most important changes are as follows:

  1. Introduction of the obligation to use the Nice Classification; this means that – while until June 17, 2019 it will still be possible to file trademarks corresponding a fixed official fee – while with the entry into force of the reform  the official fees will depends on the  number of classes of goods and services claimed (this will apply to trademark filing and renewal)
  2. Accession to the Madrid Protocol; trademarks can therefore also be protected in Canada through the designation of an international registration;
  3. Introduction of new types of so-called non-traditional trademarks, such as movement marks and holograms;
  4. Granting three-dimensional trademarks only on the basis of acquired distinctiveness;
  5. Trademark protection and therefore renewal terms reduced from 15 to 10 years;
  6. No further declaration of use will be required to obtain registration; therefore, even at the filing stage, it will no longer be necessary to indicate the current use or the intention to use basis;
  7. Claims for use and registration of the mark in third countries will no longer be accepted. However, the right to claim priority remains;
  8. Introduction of the possibility to base oppositions on bad faith.

The changes described above will also apply from June 17, 2019 to pending applications, thus without any transitional period and overlap between the two different systems.

We are at your disposal to explore the consequences of these changes on your current portfolio.