Written by Guest Author, Marks Gray Associate Logan McEwen
Trademarks in Canada are looking at a major overhaul effective June 17, 2019 as Canadian legislation adopting the Singapore Treaty, Nice Agreement, and Madrid Protocol are implemented. How the Canadian Intellectual Property Office (CIPO) examines and approves trademark applications will be remarkably different.
A short highlight reel includes:
- Registrable marks will now include scents, holograms, color combinations, and animated images alongside traditional word marks, design marks, and distinguishing guises
- Request for Customs Assistance program implemented to intercept goods bearing counterfeit registered trademarks at the border
- Applications examined for inherent distinctiveness by CIPO
- Trademark terms reduced from 15 to 10 years
- Description of goods and services using Nice international classes
- Filing fees now apply per international class of goods and services
- Applications divisible to allow uncontested matters to proceed
But none compare to the complete reversal of Canada’s traditional use-based registration system. Trademark applications with CIPO have always required an allegation of current or future use, as do most other trademark regimes (including the U.S.). Now, CIPO will no longer require an allegation of current use or future use as part of the trademark registration process.
The Removal of the “Use” Requirement
Removing the “use” requirement for trademark registration is expected to impact every business with intellectual property in Canada. Requiring use of a trademark greatly limits registrations by trademark squatters seeking a payout from major national and international brands.
Canada’s trademark regime will address trademark squatters through other changes as part of the overhaul. New “bad faith” grounds for opposing registration of a trademark can be asserted by a stakeholder claiming an application is made for purposes of trademark squatting. While use may not be necessary for registration, it will still play a part in the Canadian trademark regime.
Instead of a requirement for registration, “use” will now be extremely relevant to the third year point after registration of a trademark. First, any enforcement of a registered trademark in Canada will require the mark owner to prove actual use of the trademark as an element of the infringement claim, if the trademark has been registered for less than three years.
But what about trademarks registered for more than three years? The corollary to the trademark infringement requirement is that any trademark registered for more than three years which has not been used can be the subject of a cancellation action with CIPO. Effectively, registered trademarks in Canada will now have three years to engage in actual use before being subject to cancellation or enforceable against others.
With these changes, CIPO is kicking the “use” can down the road and addressing actual use at the three-year mark instead of prior to registration. Whether this will result in a more enlightened and streamlined process for trademark applicants remains to be seen, but the concerns for businesses with IP in Canada have already begun.
Without “use” as a prerequisite to registration, CIPO absolves itself completely of any gatekeeping duties and places those obligations on stakeholders. Businesses in Canada will need to choose either active and continuing monitoring program for any potential squatters, overzealous applications for their trademarks across all goods and services, or rolling the dice that their trademarks are not targeted by any bad faith registrations.
Canada’s move away from a “use” requirement is major and will leave no intellectual property portfolio with Canadian assets unaffected. Whether the new system provides more benefits than headaches remains to be seen, but now is a good time for businesses and brands to reassess their intellectual property strategies in Canada and adjust accordingly.