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IMPRESSIONS - IP Updates

 

Posts in Trademarks
A New Day: Canada's New Trademarks Act is Now in Force

Today Canada adopts the Singapore Treaty, the Madrid System and the Nice Classification of goods and services, along with other changes, in a significant reform of the trademark legislation.

Key Changes 

  • Multi-national applications can now be filed through the World IP Office, or WIPO, using a procedure called the “Madrid System.” 

  • Non-Traditional Marks. Registration has been expanded to cover non-traditional marks, such as 3D marks, holograms, scents, tastes, textures, colours, and sounds.  

  • Registration procedures have been simplified; chief among these, and quite controversially, “declarations of use” have been eliminated.

  • Fees have increased depending on the number of categories of goods or services associated with a trademark application, which categories must be identified.  

  • The duration or term of a new trademark registration (or renewal) is 10 years. 

The Canadian IP Office offers has adopted many new practice notices and offers resources on the new trademark legislation including the transition rules. 

Contact us today with any questions about the new trademark rules or to file for a new trademark in Canada or elsewhere.

Trademark reform is here soon

A five-year overhaul of trademark law in Canada is complete on Monday, June 17, 2019. 

In the first significant reform since 1953, the trademark legislation in Canada has been overhauled to implement international treaties, among other changes. 

  • The term of registration (or renewal) of a registered trademark reduces to 10 years, from 15 years. 

  • Registrations have been expanded to cover non-traditional marks, such as 3D marks, holograms, scents, tastes, textures, colours, and sounds. 

  • Fees have been hiked, depending on the number of categories of goods or services associated with a trademark application, which categories must be identified. 

  • Registration procedures have been simplified; chief among these, and quite controversially because of the “check” on registrations they provided, “declarations of use” have been eliminated. 

  • Multi-national applications can be filed through the World IP Office, or WIPO, using a procedure called the “Madrid System.” 

Brand owners have an opportunity to take advantage of the current rules. For example: 

  • Brand owners may wish to file Canadian trademark applications before the new rules are in place, given the current low fees and the “first-to-file” examination practice.

  • There is no need to wait until June to file for non-traditional marks

  • Registered owners may wish to renew their registrations early, to take advantage of the current low fees and avoid a new categorization (classification) requirement on renewal. 

The Canadian IP Office offers many resources on the new trademark legislation including the transition rules. Learn more.

Nice Classification Courtesy Letters

The Canadian Trademarks Office is sending courtesy letters to owners of registered Canadian trademarks inviting them to "group" and "class" the goods and services associated with their registrations.

These letters do not set out any deadline to provide a response.

Trademark owners can check the goods and services listed in their registrations by consulting the Canadian Trademark Database or the Global Brand Database linked from our Resources page

There is an advantage to grouping and classing goods and services particularly if the renewal date of a registration is approaching. The number of classes may affect the amount of the renewal fee.

We offer a service to handle the grouping and classing of your Canadian trademark registration.

Contact us for assistance with your Canadian trademark registration.