As anyone who has sought trade mark protection in Canada will know, the process can be significantly more laborious and time consuming than in many other jurisdictions, not least because of the need to identify, in respect of every term in the specification, whether the mark is in use, is intended to be used, or is in use and registered abroad. This can lead to a long-winded and complicated process for most trade mark owners, who often file applications covering both goods/services which they currently sell/offer, and those which they intend to supply/offer in the foreseeable future. An entire application can be held up until the use requirements have been satisfied in respect of all the terms claimed by the specification.
All this is set to change as of 17 June 2019, when use of a mark (whether in Canada or abroad) will no longer be one of the prerequisites for registration of a trade mark in Canada. Importantly, this change will also take effect in respect of trade mark applications which are pending as of 17 June 2019, such that applications filed now should be able to benefit from the removal of the use requirement. This change will help bring Canada’s trade mark law into line with that of most other developed countries and should help simplify the process, and thus reduce costs, for individuals or businesses seeking to protect their trade marks in Canada.
Canada will also adopt the Nice Classification system on 17 June 2019. As most trade mark owners will be aware, it is necessary in most jurisdictions to classify the goods or services claimed under an application according to the 45 classes of the Nice system, and to pay additional fees according to the number of classes claimed under an application. As it stands, the Canadian Trade Mark Office does not require goods or services to be classified according to the Nice system and, as such, does not levy extras fees based on the number of classes. However, as of 17 June 2019, this will change, and the fees payable when filing a Canadian trade mark application will increase with the number of classes.
The interaction of these two changes mean that anyone considering seeking registration of a new trade mark in Canada (particularly where the goods/services of interest might fall into more than one class) might want to think about filing an application now, before the new law comes into effect. This will potentially enable the applicant to avoid the additional charges associated with Canada’s imminent adoption of the Nice Classification, whilst also avoiding the need to use the mark before the application can proceed to registration.
Whilst there are potential cost savings to be made by filing any new national Canadian multi-class applications as soon as possible, it is worth noting that Canada will also accede to the Madrid Protocol on 17 June 2019, after which date it will be possible to designate Canada under an application for International Registration. In certain circumstances it may be that, even taking account of the additional class fees, it may work out cheaper to wait until the new law comes into force and then seek protection in Canada via the International Registration route, rather than filing a national application now.
If you have any questions regarding the issues raised in this article, or if you are considering seeking trade mark protection in Canada in the near future and would like further advice as to the most appropriate filing strategy for you, please contact your regular Dehns fee earner as soon as possible.
Co-Author: Elaine Deyes, Trade Marks Partner