Dear clients and friends,
Next June 17th, will see the coming into force of a vast range of amendments affecting the Canadian Trademarks Act. The following is a brief outline of what those changes are. There are some points that could potentially offer advantages to your businesses (look for the " * " symbol below). For more information or to discuss how these changes affect your business, please do not hesitate to call. Thank you.
1) Protection of non-traditional marks (*)
Colour, smell, taste, texture, holograms, three-dimensional and moving images: Any of these can now be the object of trademark registrations, under certain conditions.
2) No requirement to claim use or proposed use (*)
There is no longer a need to mention if the applied for trademark is used or not; It will become more important to be the first to file.
3) No more declarations of use (*)
It will no longer be required to produce a declaration of use for trademarks, thus shortening registration issuance for applications based on proposed use.
4) Extra fees for each class of goods or services
Currently, the filing fee is $250 regardless of the range of the goods or services claimed. This will change. It will be required to pay $330 for the first class of goods or services and $100 per additional class, among the 45 classes covered by the Nice Agreement.
5) Objections based on lack of inherent distinctiveness
It is believed that this change will likely lead to more substantive objections raised during examination than in the past.
6) Divisional applications (*)
This may be advantageous if the application faces examiner reports or oppositions, or if the applicant wished to assign a portion of the goods or services to an assignee.
7) Term change from 15 to 10 years
Registrations will be issued for a shorter period, more in line with the rest of the world.
8) Renewal fees increased
Based on the Nice Agreement, it will be necessary to pay $400 for the first class of goods or services and $125 per additional class that is covered by the original registration.
9) Simplified assignment registration (*)
When recording an assignment, it will no longer be necessary to file a confirming document, unless required by the assignee.
10) International registrations made easier (*)
By joining the Madrid Protocol, Canadians now have access to an international registration covering as many as 116 jurisdictions worldwide.
Please do not hesitate to contact should you have any questions. Thank you.
Richard S. Gareau