Amended Canadian Trademarks Act: Road map to implementation

26 January 2018

Speaking at the recent Annual General Meeting of the Intellectual Property Institute of Canada (“IPIC”), Mesmin Pierre, the Director General of the Canadian Trademarks Branch, provided a road map to implementation of changes to the Canadian Trademarks Act that will see Canada join the Madrid Protocol and the Nice Classification system in early 2019.

The Canadian Government introduced legislation in March of 2014 overhauling the Canadian Trademarks Act. Amongst other things, the overhaul included implementation of the Madrid Protocol and Nice Classification system and elimination of “use” as a prerequisite to registration in Canada. The legislation was signed into law in June 2014 but implementation was delayed while the Trademarks Branch dealt with the critical regulatory and system changes needed to support the changes.  A lot was accomplished in 2017 but there is much more to do in the year ahead as the Trademarks Branch and stakeholders get ready for 2019.

The regulatory changes required to implement the changes to the Trademarks Act are significant and, rather than simply tweak the existing Regulations, the Trademarks Branch embarked on a wholesale rewrite to deal with everything from application formalities, through to divisional applications, opposition procedures and the rules required for processing of Madrid Protocol applications.  Stakeholders were impressed and pleased that the Trademarks Branch engaged in very broad consultations on the new Regulations throughout 2017.  Now that the consultation has ended, the Trademarks Branch will embark on the formal steps required to put the new trademark Regulations into place.

Speaking at the IPIC AGM, Mr. Pierre took the opportunity to continue his engagement with stakeholders and he also laid out the steps that will be taken in 2018 leading to implementation of the new law in 2019.

To put in place the new Regulations, the Trademarks Branch has to follow the official Canada Gazette procedures. The process starts with publication of the new Regulations in Canada Gazette, Part I. Publication will start a period within which all Canadians may submit their comments on the Regulations. The Trademarks Branch anticipates publication in Canada Gazette Part I in February of 2018. Once the period for consultation is complete, the Regulations will be amended as necessary before being enacted and published in Canada Gazette Part II. The Trademarks Branch anticipates publication in Canada Gazette Part II in October 2018.

While the new Regulations work through the Canada Gazette process, the Trademarks Branch will start work on a new Examination Manual and on new Practice Notices. These will be of particular importance as all stakeholders learn to live within the new regulatory environment. Mr. Pierre has promised extensive consultation on those documents in 2018.

Once the Trademarks Branch is ready to implement the changes to the Trademarks Act (i.e. the Regulations have been enacted and the Examination Manual and Practice Notices are ready), the Canadian government will deposit instruments of accession for the Madrid Protocol, the Nice Classification system and the Singapore Treaty with World Intellectual Property Organization (“WIPO”). The coming into force of the changes will be three-months after the instruments of accession are deposited, which will bring us into early 2019.

Accordingly, 2018 promises to be a very busy year both for the Trademarks Branch and stakeholders as they work through the consultation process on the Regulations and the drafting of the Examination Manual and the Practice Notices. In the meantime, brand owners should take the opportunity to review their portfolio and make sure that they are ready for implementation. In particular, the Trademarks Branch is seeing a rise in the number of multi-class applications being filed in Canada. It is becoming obvious that some brand owners are taking advantage of the current window of opportunity to file multi-class applications knowing that by the time those applications are allowed, the requirement to file a Declaration of Use will be dropped. The Trademarks Branch currently charges $250 per application regardless of the number of classes listed in the application and will not move to a per class fee until 2019.  This means that there is a significant advantage to filing multi-class applications now before the changes come into force. This may start to crowd the Trademarks Register very quickly. As a result, all brand owners should be looking to ensure that their rights are staked out on the Register now. 

NOT LEGAL ADVICE. Information made available on this website in any form is for information purposes only. It is not, and should not be taken as, legal advice. You should not rely on, or take or fail to take any action based upon this information. Never disregard professional legal advice or delay in seeking legal advice because of something you have read on this website. Gowling WLG professionals will be pleased to discuss resolutions to specific legal concerns you may have.