Top Five Reforms Made to Trademark Law of Canada in 2019

BlogIntellectual Property RightsTrademark    December 11, 2019
Trademark Registration in Canada Posted On

After around five years of anticipation, sweeping reforms to the Trademark Law of Canada had finally come into force on 17th June 2019. Well, these changes that have influenced the Intellectual Property (IP) industry are many in numbers, and being familiar with all of them may appear a bit arduous and frustrating. Hence, to help you to enjoy the trademark rights under the changed law with ease and without any hurdle, we have summarized some of the most vital changes that trademark owners and practitioners must consider.

Came into force on 17th June 2019, the following are some of the crucial reforms made in Canada’s Trademark Law.

  1. Registration and Renewal Terms Are Shortened

 In comparison to the previous term of 15 years, the new registration and renewal terms under the reformed rules will be ten years. It means that any registration issued on or after 17th June is valid for ten years. Similarly, any registration renewed on or after this date will have a renewal term of 10 years.

  1. More Non-Traditional Trademarks Are Registrable

Under the amended Trademarks Act, the applicants are allowed to file several types of non-traditional trademarks, most of which weren’t permitted before. Some of these marks include taste marks, scent marks, and marks for color per se. However, in almost all cases related to applications for non-traditional marks, there is a need to provide evidence proving that the mark was distinctive in Canada at the date of applying.

  1. Divisional Applications Are Available

As of the law (rules) amended on June 17th, it is now possible for the applicants to divide their applications, especially to overcome objections raised during the prosecution or the opposition. It is one of the best ways to make one portion of the application to proceed towards registration while focusing on and removing issues on the remaining ones.

  1. Notification of Third-party Rights Are Involved

The Canadian Intellectual Property Office (CIPO) under these amended rules has revealed an objective to introduce a mechanism to bring third parties to CIPO’s attention. This part of the amendment is expected to have an impact on the registration of pending Trademark Applications in Canada. This mechanism, although new in Canada, it is similar to the concept of “letters of protest” available in many jurisdictions.

As the amended rules say, the procedures that do not create an inter partes proceeding are now limited to three grounds, such as:

  • Confusion with any Registered Trademark
  • Mess with any prior-filed application
  • If the registered trademark is used to define products and services in the application

Apart from this, the amendment says that written arguments or evidence of prior use will not be considered or accepted.

CIPO also indicated that if the specified mechanism is abused, it holds the right to dismiss the practice.

  1. Section 45 (Non-Use Cancellation) Has Been Targeted

 Previously, Section 45 (non-use cancellation) notice was applicable to be issued against the registration as a whole, even if the requesting candidate wants to challenge only one portion of the products or services.

Nevertheless, it is now (after the amended rules came into force) possible to get Section 45 notice issued against any subset of the assets listed in the registration. Well, this amendment is expected to result in more efficient and quicker resolutions of concerns related to such proceedings.

Another remarkable change is that CIPO itself can initiate the proceedings associated with Section 45. Note that beforehand, such proceedings were initiated only at the request of third-parties. However, it is still to be seen how and when CIPO intends to exercise this power.

Are You Ready?

After going through the above-given statistics, you are now available with almost all the information needed to obtain Trademark Registration in Canada. This up-to-date info will help you in several ways, like preventing rejection of the application, enjoying all benefits of registration for the complete term, etc. Hence, be confident and file the trademark application in Canada without any hesitation. Nonetheless, if there is any doubt, then it is better to consult any experienced Intellectual Property Law Firm or Trademark Attorney before proceeding. For more visit: 

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