Sean MellinoBeginning June 17, 2019, sweeping changes to Canadian trademark laws will finally be in effect. The transition comes after longtime lingering rumors. United States entities that conduct business in and are trademark owners in Canada should be aware of some of these key changes. The ultimate goal is to align Canadian practice with other jurisdictions worldwide.

Requirements of Filing Applications and Prosecution Process
First, new Canadian applications will have to comply with the classification system of goods and services that is already used in the U.S. Historically, Canadian applications had all goods and services included together. These changes mean that attention will have to be paid to the various classes of goods and services, with which U.S. trademark registration owners should already be familiar.

Second, new trademark applications filed in Canada will no longer have to include dates of first use. Furthermore, asserting actual use will not be required for a trademark application to proceed to registration. The result of this change means that an intervening party could potentially secure a Canadian registration without proving use in Canada. In other words, there could be an increase in squatters or trolls obtaining Canadian trademark registrations, to the detriment of valid Canadian trademark owners. In turn, a valid trademark owner in Canada might have to address this intervening registrant which could complicate its ability to secure its own registration in Canada. This emphasizes the importance of filing applications in Canada sooner rather than later when there is trademark use in Canada, or when it is anticipated in the near future. There will clearly be an increased value in “first to file” under the new Canadian system.

Third, the expansion of Canadian laws to help protect non-traditional trademarks (such as colors, scents, tastes and moving images) is an interesting development. Other jurisdictions, including the U.S., have already been affording protection to non-traditional trademarks, so this will be a welcome change that helps increase the range of Canadian trademark protection. However, non-traditional trademarks will still be subject to examination for distinctiveness (much like in the United States). So it could be difficult to obtain registrations of non-traditional marks unless the trademark owner can provide substantial evidence of extensive use and promotion in the Canadian market.

Registration Term and Renewals
The term of a Canadian trademark registration will be 10 years for registrations issued after June 17, 2019, instead of 15 years under the current system. The term for registrations that are already in existence before June 17, 2019 will remain at 15 years. Importantly, they will not be converted to a 10-year term until the next renewal deadline arises. Furthermore, any Canadian registration renewed after June 17, 2019 will need to be amended to place the goods and/or services into appropriate separate classes. This means that there could be a cost savings in renewing a Canadian registration prior to June 17, 2019.

The adoption of the classification system mentioned above results in a new filing fee system. As is done in the United States, the trademark application filing fee will be based on the number of different classes of goods and services. In the new Canadian system, this fee will be $330 (CDN) for the first class, plus $100 (CDN) for each additional class of goods and/or services. This is a significant change. Instead of having a single filing fee, regardless of the number of classes of goods and services, new applications could have drastically higher filing fees if many different classes are included. A small consolation is that the $200 registration fee will be eliminated.

It may be worthwhile for U.S. trademark owners to review and audit their own portfolio to determine if any cost-savings steps should be taken before June 17, 2019. If you have trademark questions or concerns, either in the United States or in Canada, please reach out to our Intellectual Property team. We’d be happy to help.