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Canada’s proposed new trademarks regulations

trademarksThe Canadian Intellectual Property Office (“CIPO”) has released a first draft of the Regulations that will support our new Trademarks Act now scheduled to come into force in early 2019. The consultation period for these new Regulations will expire July 21, 2017 and will be followed by a further consultation term in late 2017 or early 2018.

The Regulations are a complex blend of the Canadian Regulations with the Common Regulations for the Madrid Protocol and also provide for our adherence to the Singapore Treaty and the NICE Agreement. The proposed Regulations will implement a number of significant changes in Canadian trademark practice including the following:

  1. Adherence to the Madrid Protocol. For Canadians, the Madrid Protocol will provide the ability to secure international registration of a mark through a single application in a more cost and administratively efficient manner. In turn, foreign applicants will now be able to secure protection in Canada under the Madrid Protocol.
  2. The elimination of use as a prerequisite to registration in CanadaThere will be no more Declarations of Use and the new Regulations do not introduce any use based maintenance requirement for Canadian registrations. This should reduce overall timing to registration for a standard application. Importantly, use will remain a crucial element for protection and enforcement of marks in Canada following the 3 year protection period.
  3. The elimination of the requirement to declare a specific filing base for applicationsThis includes the elimination of the requirement to claim existing Canadian use at the time of filing and the elimination of reliance on a foreign registration as a basis for a Canadian application. Applications will include a standard statement that the applicant has used or intends to use the mark in Canada.
  4. Introduction of a per class application and renewal fee structureWhile single class applications will enjoy a slight reduction in government fees, multiple class filings will see an increase. Similarly, government renewal fees for multi-class registrations will be more expensive than for renewals filed before the coming into force date. Multi-class applications filed now before the coming into force date will pay only a single government fee.
  5. Renewal requests will only be accepted six months before or six months after a renewal deadlineRegistrations with a renewal deadline that falls after the coming into force can be renewed now but will be allocated the 10 year renewal term. Currently, a renewal request can be filed at any time. You may wish to consider renewal requests now to avoid the per class renewal fee structure.
  6. Reduction of the term of registration from 15 to 10 years for new registrations issued after the coming into force dateExisting registrations will be converted at their next renewal date.
  7. Introduction of NICE Classification. The proposed Regulations implement the requirement to group and class according to the NICE Classification before approval of a new application and as part of the renewal process, or in response to a CIPO issued notice requesting classification for registered marks. CIPO currently provides the ability to classify applications and registrations in preparation for this on a voluntary basis.
  8. Introduction of letters of protestThe proposed Regulations provide the ability to correspond with an Examiner to raise registrability concerns about a third party application at any point from filing to publication.
  9. Division of applications. The Regulations introduce the ability to divide goods and services in an application into two or more applications during examination and opposition to provide the ability to advance applications for certain goods and services, if others remain challenged.
  10. Changes in opposition practice. For opposition proceedings, we will now have sequential filing of Written Arguments ending with the applicant’s submissions and shared responsibility in cross-examination with the examined party to be responsible for submission of undertakings by the deadline.

The 30 day consultation period, which ends July 21, 2017, provides opportunity to raise considerations and concerns with CIPO before the draft Regulations advance in the regulatory process. CIPO continues to demonstrate its willingness to collaborate with the agent community and brand owners on these important changes to Canadian trademark practice.

By Jennifer L. Morton, Partner, Gowling WLG International Limited

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