Trademark Law Changes

Amendments to Trademark Legislation
On June 17, 2019 the Trademarks Act will undergo substantial changes. The changes are an attempt to help align Canada with the rest of the developed world in regards to Intellectual Property legislation. This article will briefly summarize some of the proposed changes, and outline how it may affect Canadian businesses.

Registering a Trademark
Registration Requirements
Currently, Canadian trademark legislation requires applicants to include details outlining the trademarks “use”.[1] Therefore, applicants need to claim or declare that they had “used” the trademark in Canada. Additionally, they would have to include a date of first use. Alternatively, if applicants had not “used” the trademark in Canada, then a Declaration of Use would need to be submitted before a registration could be filed.[2] On June 17, 2019 details of use and registration of the trademark abroad is no longer required.[3] Anyone will be able to file a trademark application regardless of whether they intend to use the trademark or whether the trademark was previously used.[4]
Unfortunately, these changes have opened up Canadian trademarks to “trolls” (or “squatters”). Since the announcement that the Trademarks Act would undergo changes in 2014, trolling applications are on the rise.[5] In 2017 there were 427 “all-class” applications on the Canadian database.[6] Compared to the 4 filed in 2016, this represents a significant increase in the number of filings. This increase appears to be due to trademark trolls.[7] This increase in trademark trolling creates problems for brand owners. To avoid becoming a victim of these trolls, many intellectual property law firms are advising clients to file their applications in Canada promptly, especially in cases where a trademark has a reputation abroad but not in Canada.[8]
Registration Process
The amendments will require all goods and services listed in a trademark application to be classified in accordance with the Nice Classification system.[9] This differs from the current system which allows the registrants the option to indicate the classes of goods and services into which the trademark will be associated with.[10]
 
Trademark term length and eligibility
Trademark Term
Trademark term length will be shortened from 15 years to 10 years, requiring trademark holders to apply for renewals more frequently.[11] Renewals will cost $400 CAD for the first class of goods and services, with an extra $125 CAD for every additional class the holder wants to renew in.[12] Therefore, if you are a current owner of a multi-class trademark that expires after June 17, 2019 it may be wise to renew while there are no fees attached to each class.[13]
Trademark Eligibility
Under the new amendments what may be considered an eligible trademark for registration purposes will be broadened. Colours, holograms, animated images, sounds, scents, tastes, and textures will soon be eligible for trademark protection.[14] These non-traditional trademark classes will be vetted for their distinctiveness at the time of use.[15] Distinctiveness will be determined based on the unique characteristics the trademark holds, not based on consumer recognition and goodwill.[16]

Conclusion
This post highlights just some of the changes to the Trademarks Act. If your business is looking to file a trademark in the near future, it will be beneficial to familiarize yourself with the proposed changes. If you have any questions related to trademarking in Canada feel free to contact the BLG Venture Clinic.

Tyler Anthony is a member of the BLG Business Venture Clinic, and is a 2rd year student at the Faculty of Law, University of Calgary.

References:
[1] Christopher Heer, Toba Cooper and Daryna Kutsyna, “Amendments to the Trademarks Act will Come into Force of July 17, 2019 – Are you and Your Business Ready?” (26 January 2019), Heer Law Resources (blog), online: <https://www.heerlaw.com/upcoming-changes-trademarks-act/>.
[2] Anna Loparco, “Upcoming changes to Canada’s trademark and anti-counterfeit laws” (19 July 2018) Dentons Insights (blog), online: <https://www.dentons.com/en/insights/alerts/2018/june/11/major-changes-to-canadas-trademark-laws/>.
[3] Philip Lapin, “ The date is set: June 17, 2019 – Canada’s New Trademark Law will be in Force” (14 November 2018) Smart & Biggar Fetherstonhaugh Articles (blog), online <http://www.smart-biggar.ca/en/articles_detail.cfm?news_id=1491/>[Lapin].
[4] Ibid.
[5] Ibid.
[6] Kohji Suzuki and Jamie-Lynn Kraft, “ The Trolls have arrived: Suspicious trademark applications on the rise” (12 March 2018), Smart & Biggar Fetherstonhaugh Articles (blog), online <http://www.smart-biggar.ca/en/articles_detail.cfm?news_id=1368/>.
[7] Ibid.
[8] Lapin, supra note 3.
[9] Heer, supra note 1.
[10] Ibid.
[11] Ibid.
[12] Ibid.
[13] Ibid.
[14] Lapin, supra note 3.
[15] Heer, supra note 1.
[16] Ibid.