Earlier this year Canada’s government proposed Canada major changes to the Canadian Trademark Act and in June the bill (C-31) received royal assent.
The changes enable Canada, as one of the last (if not the last) western industrialized countries, to accede to the Madrid Protocol, Nice Agreement and the Singapore Treaty.
Some of the most significant changes will inter alia mean that the following:
• The term of registration is reduced from 15 to 10 years.
• Divisional trademark applications in order to avoid that uncontested goods or services are delayed by issues with other parts disputed by an examiner or opponent.
• Further types of trademarks such as sounds, scents, 3-D shapes, tastes and textures are now explicitly permitted.
• The requirement to identify whether a trademark has been used or is proposed to be used at the time of filing is removed.
• Trademarks with features consisting mainly of a utilitarian function are not possible to register and a utilitarian feature embodied in a trademark will not prevent a third party from using that feature.
With the above Canada is finally in line with the majority of the trademark world. This will of course make it much easier and more interesting for trademark holders to apply for registrations in Canada when costs and administrative burdens are reduced. Not the least since it is possible use the Nice Classification system and designate Canada in an international registration via WIPO.
This is also the ambition of the Canadian government which expects that the above modernization, which aligns Canadian trademark regime with international practice, will make things easier for Canadian companies as well as attracting foreign investors.
The changes are expected to be fully implemented within a year.
Peter Hermansson, Attorney at Law
