Canada’s New Trademarks Act

 In Canada, New trademark law, Trademark, Trademark law, WIPO

A new Trademarks Act will be implemented in Canada on June 17th, 2019. Due to this Act, the Canadian Trademark Law will undergo significant changes.

The below information is what trademark owners should be aware of:

  • Canadian trademark applications that register after June 17th, 2019 will have a protection period of 10 years. Renewal request can be filed 6 months prior the expiry date.
  • Already registered marks will upon renewal receive protection only for 10 years, instead of 15 years as before.
  • Canada will adopt the Nice Classification system.
  • Canada will become a member of the Madrid Protocol, meaning that with effect from June 17th, 2019, it will be possible to designate Canada through WIPO.
  • It will be possible to file for non-traditional marks, such as holograms, sounds, scents and flavors.
  • You can divide applications in Canada, which will be (of strategic assistance) beneficial during prosecution and oppositions.
  • When filing a new trademark application in Canada, you will be charged a fee for each class in your application.
  • A Declaration of Use will no longer be required. This will apply to all new applications, as well as all pending applications. When the Canadian PTO has accepted your application, you are only required to pay the registration fee in in order to get the registration certificate (and the mark will have protection for 10 years).
  • To avoid falling victim of bad faith infringement, it is important to file applications in Canada promptly. Especially when a trademark has a reputation abroad but not yet in Canada. In those cases, legitimate trademark owners who do not register their trademark in Canada, are facing the risk that a third party may register the trademark first.

If you have further questions or need assistance in securing your brand in Canada, do not hesitate to contact us at Otmore.

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