Updated Amendments to Trade-marks Act

Generational Changes to the Trade-marks Act

By: Ryan Smith, April 2019

Trademark law is changing. Set to come into effect on June 17, 2019, the changes to
the law are the most significant in almost 70 years.

Upon reviewing all the amendments to the law, two things are clear. First, trademark
applications will be broader in scope and more flexible after the changes are
implemented. Second, once the law is amended, the fees to be paid to the government
for trademark applications will increase and in some cases that increase will be
considerable. Therefore for any new trademarks you are thinking about, it will be
important to assess whether the expanded law or the lower fees will be more beneficial
for you.

Below I have set out the most substantial changes to our trademarks law.

1. New Types of Trademarks. More non-traditional trademarks will be permitted for
application and registration such as colour, taste, sound, texture, personal names,
a three-dimensional shape, a hologram, a moving image, a mode of packaging
goods, and a scent. The Trademarks Office will have the right to request evidence
of distinctiveness for these non-traditional trademarks. Consequently it will be
more difficult to register non-traditional trademarks.

2. No Use Required for Registration. In the past the use of a trademark and its
protection under the law were inextricably intertwined. Now an applicant can have
its trademark registered without ever having used the trademark. This is a
dramatic departure from the historic basis for trademark law. That said, even
though an applicant will be able to register a trademark that has never been used,
other parties still have the power to challenge that applicant on the basis of their
previous use.

3. International Filing Mechanism. Applicants in Canada shall be able to use the
Madrid international filing mechanism to file applications in other countries around
the world and international applications shall also have the same power to file in
Canada.

4. No Specific Filing Grounds. The application process will not require the
disclosure of filing grounds. However that will not eliminate the importance of
those grounds. In any challenge of the trademark rights claimed, it will be critical
that the applicant understands and can substantiate the grounds under which they
are making their application.

5. Dividing Applications. Applicants will be able to divide their applications with
one application containing certain goods and services and the other the remainder.
This will be useful when either the Trademarks Office or a third party disputes the
right of the applicant to a trademark with certain contested goods or services.

6. Fees Increase for Goods and Services Listing. Presently you can file virtually
hundreds of goods and services in association with your trademark application and
the government fee for doing so is exactly the same as if you listed merely one
good. That will all end. The changes incorporate the Nice Treaty classification of
goods and services. Government fees will be $330 for the first class of
goods/services and $100 for each additional class.

7. Registration Length. On registration trademarks will be protected for 10 years
down from 15 years now.

8. Renewal Costs Increase and Renewal Period Shortens. Renewal fees for
registered trademarks will depend on how many classes there are in the
registration with $400 being charged on the first class of goods/services and $125
for each additional class. The renewal term will also decrease from 15 years to 10
years.

* * * * *

Ryan K. Smith is a Lawyer and Trademark Agent at Feltmate Delibato Heagle LLP. He
is a corporate and commercial lawyer with expertise in intellectual property law. Ryan is
the author of the book Intellectual Property Law in Commercial Transactions published
by Thomson Reuters. You can reach Mr. Smith at (905) 287-2215 and
rsmith@fdhlawyers.com. This article represents general information only and does not
constitute legal or other professional advice or an opinion of any kind.