Changes to the Canadian Trade-marks Act: What Business Owners Can Do Before They Take Effect

Some significant amendments to the Trade-marks Act received Royal Assent on June 19, 2014, but probably will not take effect until sometime in 2015.  In the meantime, trade mark owners should familiarize themselves with the upcoming changes and try to take advantage of current rules to better protect their marks.

Elimination of the Use Requirement

One of the key changes is that claiming a date of first use of a trade mark in Canada or proposed use will no longer be required, which means it will be possible to get a trade mark registration without ever using the mark here.

This is likely to lead to more speculative filings.  The general principle ‘first in time, first in right’ will continue to apply, but, unless they have a registration, owners of prior rights in a mark are more likely to have to resort to costly opposition proceedings to stop a third party application for a confusingly similar mark.  If a speculative application is registered, it may be much more difficult to dislodge.

As a defensive measure, trade mark owners should file sooner rather than later for any unregistered marks which they are using or intend to use in Canada.

Additional Classification Costs

The adoption of the Nice Classification System will also add to the cost of filing applications.  Currently, only one fee is charged for an application, regardless as to whether the goods or services fall into more than one class.  Once the amendments take effect, additional fees will almost certainly be required if the associated goods and services fall into more than one class.

If your marks cover a broad range of goods and services, filing before the amendments take effect may avoid this.

Shortening of the Registration Term

The term of registration will be shortened from 15 to 10 years, which will increase the cost of maintaining and renewing a trade mark over time.

If you have a registration which is nearing the end of its 15 year term, it may make sense to renew for a further 15 year term while the current rules are still in effect.

Trade mark owners who register their marks before the amendments are proclaimed into law can potentially receive better protection, save on costs and benefit from longer registration terms.