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Implementation of Canada’s Trademark Act pushed back

The implementation of the amendments to Canada’s Trademark Act is now not expected before 2018, with IP practitioners suggesting some strategic issues trade mark owners should consider now

Last week, Johanne Bélisle, CEO of the Canadian Intellectual Property Office (CIPO), announced that the implementation of the Madrid Protocol, the Nice Agreement and the Singapore Treaty will occur in 2018.

According to Cynthia Rowden, partner at Bereskin & Parr, other CIPO staff have confirmed that amendments to the Trademarks Act, passed but not yet implemented, will be put in effect at the same time. CIPO had previously indicated that implementation was likely to 2016 or 2017.

“Commissioner Bélisle’s announcement pushes back implementation another year at least,” Rowden explained on the law firm’s website. “However, in anticipation of the Nice Classification requirements, the Trademarks Office has informally classified all pending and registered marks on the Register, and since late September 2015, has invited applicants to now use specific approved terms for goods and services, plus voluntarily assign Nice Classes to goods and services. Trade mark owners are encouraged to carefully consider any marks that now have added class details, to ensure they correspond with the owner’s expectations. Some questions are outstanding, including the ability to change assigned classes, and the ultimate impact on fees for renewal.”

It was also announced that a fee consultation on expected new fees for filing and renewal will take place in 2016.

Bill C-31 passed last year and included the biggest changes to the Trademarks Act for more than 60 years. These changes included to its name – it was formerly the Trade-marks Act. Other changes include increased fees for filing, simplified filing of applications, and replacing some of the unique aspects of Canada's trade mark act such as "trade-mark" becoming "trademark" and the definition of trade mark being expanded.

The changes were brought in to move Canada toward adhering to international trade mark treaties including the Madrid Protocol, the Nice Agreement and the Singapore Treaty. The Nice Classification of goods and services will be adopted, for example.

Ramifications for declaring use

One of the biggest changes was the elimination of the requirement for declaring use of a mark in Canada before obtaining a registration. Smart & Biggar on its website noted that the newly-announced delay in the implementation of this provision “warrants consideration of the optimal strategy to be adopted in connection with the requirement to declare use in the interim period.”

At the moment, a trade mark application is based upon “proposed use” of the mark in Canada. The applicant is required to file a declaration stating that use of the trade mark has commenced in Canada in association with goods and/or services for which there was no use at time of filing. 

“The elimination of the need to file a Declaration of Use, once implemented, will apply not only to applications filed after the change in the law, but also to all pending applications,” said Smart & Biggar. “Accordingly, since the implementation was previously anticipated for 2017, an applicant having yet commenced use of its mark, but with a window of time to file a Declaration of Use extending to 2017, could strategically request consecutive extensions of time until the new law comes into force. However, based on comments recently made by the Trademarks Office, it now appears that the amendments to the Trade-marks Act will not come into force until at least the beginning of 2018.”

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