a trademark will become more difficult as
the Register will become cluttered with
intended use trademarks. It will also likely
lead to an increase in "trademark trolls"
or "trademark squatters" in Canada who
will file applications to register trademarks
ahead of the legitimate trademark owners
merely to try to gain an advantage, financial
or otherwise. Unfortunately, this will put
trademark owners in a position of having
to oppose, seek to expunge or otherwise try
to reclaim their trademarks, which can be
both lengthy and costly.
divided so that non-contentious portions of
the application can proceed to registration
while the remainder of the application
undergoes continued examination. As a
result, applicants might strategically choose
to file for goods and services that are much
broader than before since there is no longer
a risk that the application will be held back
on account of potentially problematic goods
and services.
and subsequent renewal terms in Canada
will be shortened from 15 years to 10 years.
However, registrations issued and renewals
granted (if due) prior to the coming into
force of the new Act will still have the
benefit of a 15-year term.
what constitutes a trademark (which
will no longer be hyphenated) has been
expanded to include not only words and
designs, but also personal names, letters,
numbers, colors, figurative elements,
three-dimensional shapes, holograms,
moving images, modes of packaging goods,
sounds, scents, tastes, textures and the
positioning of signs. However, trademarks
with primarily utilitarian features (those
that serve a use or function) will not be
registerable. While it is still unclear how
these new forms of trademarks will be
handled, there will likely be a rush to be the
first to file them, even before the new Act
comes into effect.
to a trademark for lack of distinctiveness.
Distinctiveness is the characteristic or
quality that distinguishes an owner's brand
or trademark from those of competitors. A
trademark that is not inherently distinctive
may acquire distinctiveness through use.
Currently, evidence of distinctiveness may
only be required in limited circumstances,
such as for trademarks that are clearly
descriptive, or that have a name or surname
significance. Under the new Act, CIPO
examiners will be able to object to a
trademark if their preliminary view is that
the trademark is not inherently distinctive,
and therefore, applicants may be required
to submit evidence of distinctiveness of
the trademark in order to overcome the
objection.
offer trademark owners another avenue
through which to obtain trademark
protection in Canada. Since Canada
will become a contracting state, foreign
applicants will be able to add Canada
to their international applications
filed with the World Intellectual
Property Organization (WIPO) and
Canadian applicants will be able to file
international applications with WIPO to
obtain international protection for their
trademarks.
who wish to protect their brands in Canada,
it is more important than ever to review
your brand portfolios in order to identify
any trademarks that are not yet registered or
any goods and services that are not covered
by existing applications or registrations in
Canada, and to consider filing applications
for registration as soon as possible before
the amendments to the Act come into force.
Here is why:
determined, filing now while government
filing fees remain modest could avoid
an anticipated increase in filing fees for
multiple classes of goods and services.
goods and services according to the Nice
Classification for the time being, making
the drafting and filing process quicker
and easier. Moreover, since divisional
applications will soon be allowed, you can
take advantage of that by filing as broadly
as possible.
will be of paramount importance since use of
a trademark will no longer be a prerequisite
for registration.
trolls" under the new regime, applications
for registration should be filed as soon as
there is even a reasonable likelihood of using
trademarks in Canada. As well, priority of
foreign trademark applications should be
claimed when possible, particularly if the
trademarks are being used across the border
in the United States or on the Internet, which
is likely to result in spillover advertising.
the new Act comes into force, you will still
benefit from a 15-year registration term. And
if you already have a registered trademark
with a renewal deadline that falls on a date
before the new Act comes into force, you
can renew now to take advantage of a longer
renewal term.
currently required, filing now for any
non-traditional marks or marks that are
not inherently distinctive (e.g., letters,
numbers, graphic images, tag lines) could
avoid lengthy and costly objections based on
distinctiveness under the new regime. Also,
filing now for any new forms of trademarks
will put you at the front of the line.
Some of these amendments to the Act
may also apply to pending applications as
well as existing registrations. The full impact
of the transitional provisions is not yet
known. However, the further along you are
in the registration process when the new Act
comes into force, the better. Take action now
to implement a proactive strategy that best
protects your brands in Canada.