Registration System: What You Need to Know
and Why You Should Act Now
law in Canada to modernize Canada's
trademark registration system and to align
it with international best practices. Canada
will now adhere to various international
treaties, specifically the Madrid Protocol,
the Nice Agreement and the Singapore
Treaty, which together constitute the main
system for registering trademarks in many
jurisdictions worldwide. The Canadian
Trade-marks Act (the Act) has already been
system. However, these amendments will
likely only come into effect in 2018 or later,
once the Canadian Intellectual Property
Office (CIPO) has updated the Trademarks
Regulations, its policies and procedures,
and web-based applications. Until then,
the current registration system will remain
in force, allowing trademark owners to
continue taking advantage of certain
benefits of the current regime.
and services be described in ordinary
commercial terms and does not require that
goods and services be divided into classes.
Under the new regime, applicants will be
required to identify goods and services by
class according to the classification system
established by the Nice Agreement (the
Nice Classification). This change could
complicate and delay the application
drafting and filing process, particularly
for applicants who have not already filed
applications for their trademarks in other
countries that comply with the Nice
Classification.
there is only one government filing fee
per application regardless of how many
classes of goods and services are included.
However, in most other countries,
government filing fees are applied to each
class of goods and services covered by the
application. Along with the implementation
of the Nice Classification, it is likely that
CIPO will also implement a per-class filing
fee structure.
longer have to identify the filing grounds
of the application and therefore will no
longer have to specify whether there is
actual or intended use of the trademark,
or provide a date of first use. This will not
change the first-to-use entitlement regime
that has always been in effect in Canada,
and applications may still be opposed on
the basis of prior use or previously filed
applications or registrations. However, it
will no longer be possible to determine from
the trademark register whether the owner of
an existing registration or previously filed
application is a prior user. In the absence of
such use information, trademark availability
searches will become more complex, and
more extensive marketplace investigations
will be required to determine relative dates
of first use and the chances of success of an
opposition. Oppositions may have to be filed
blindly without this information and prior
use will instead be determined through the
exchange of evidence during opposition
proceedings.
must be in use (in Canada or elsewhere) in
order to obtain registration. Applications
can be filed on a proposed use basis,
but a declaration of use is required in
order for such applications to proceed
to registration. Under the new regime,
registration can be issued based solely on
a stated intention to use the trademark in
Canada. Declarations of use will no longer
be required and registration fees will no
longer be payable. Proof of use will only
be required if a registration is challenged
for non-use after three years from the date
of registration. Since actual use will no
Bellemare LLP, where she practices in the
area of corporate and commercial law, and
is responsible for the firm's life sciences and
trademark practices. Lyanne has a particular
expertise in biotechnology and pharmaceutical
law, and intellectual property. She represents
private and public companies in a wide variety
of corporate and commercial transactions,
including mergers and acquisitions, licensing
and distribution agreements, joint ventures and
other strategic alliances.
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Canada
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