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Missing the (Trade) Mark?

By Hannah Roche + James Struthers - June 12, 2019 under Business Advisory

Sweeping Amendments to Trademark Act ‘Globalizes’ Registry System; Fails to Address Protection of Indigenous Knowledge

Canada’s Trademark Act is getting a major renovation on June 17, 2019 to align our trademark registration system with international standards. Here’s a quick breakdown on what to expect, and some tips on what you can do this week to save time, money and otherwise prepare for the changes.

Globalization and International Synchronization of Trademark Registration

The rapid rate of globalization over the last half century has left most domestic intellectual property laws behind the times, and many businesses behind the 8-ball, navigating variant and asynchronous trademark regimes across the globe. Over the last half century, significant international efforts led to the execution and ratification of multilateral instruments which simplify protection of trademarks globally (e.g. the Singapore Treaty (2006); the Madrid Protocol (2007); and the Nice Agreement (1979)).

Changes to the Trademark Act

In timely fashion, the Canadian government proposed amendments to the Trademark Act in 2014, which will come into force on June 17, 2019. The most significant changes respect the application for registration eligibility and process.

Current Registration Scheme

Currently:

  1. applicants for trademark registration in Canada must establish use of the mark in Canada in order to obtain registration;
  2. distinctiveness may only be raised as a ground of opposition against a registration application, and new applications are not currently assessed for distinctiveness;
  3. Canada uses a limited trademark classification system;
  4. priority applications outside of Canada based on registration within Canada may only be made in the applicant’s country of origin;
  5. registration in Canada does not automatically provide applicants with protection in other countries;
  6. registration is only available for work marks, design marks and distinguishing guises;
  7. registration terms are for 15 years;
  8. registration fees are $250 per mark, regardless of the number of registration classifications; and
  9. registrants must file a notice to the Canadian Intellectual Property Office (“CIPO“) merger or assignment.

Changes

From and after June 17, 2019 (the numbers align with the current scheme above for ease of reference):

  1. applicants will no longer be required to establish use in Canada to obtain registration;
  2. all pending and new applications will be subject to CIPO’s examination of the mark for distinctiveness;
  3. the trademark classification categories will mirror those set out in the Nice Agreement;
  4. priority claims may now be made based upon any application, regardless of the country of origin of the applicant;
  5. registrants can file one application, with one set of fees, and receive protection of their registered mark in over 120 countries, as Canada will implement and adopt the Madrid Protocol;
  6. new types of marks may now be registered (scents, holograms, animations and colors);
  7. registration terms will be 10 years rather than 15, although existing registration terms will not be reduced;
  8. registration and renewal fees have been significantly increased:
    • registration will now cost $330, plus $100 for the second and each subsequent registration class; and
    • renewal will not cost $400, plus $125 for the second and each subsequent registration class; and
  9. a post-merger or assignment notification will no longer be required.

To-Dos

We recommend the following:

  • if you are planning on submitting an application or have an upcoming trademark expiry, we recommend filing these applications and renewals prior to June 17, 2019 to avoid higher registration and renewal fees.
  • if you are planning on applying to add classification categories to your registered mark, we recommend making these filings prior to June 17, 2019 to avoid per-class registration costs.
  • if you are considering filing for protection of a mark, we advise filing prior to June 17, 2019 to protect against mark squatters – since applicants are no longer required to establish use, it is widely anticipated that registration rates will go up significantly as interested parties stock up on potentially valuable marks.
  • update your bring-forward system to reflect the shortened registration terms.

Indigenous Intellectual Property

The Trademark Act revisions represent a missed opportunity to make amendments to both protect Indigenous communities unauthorized use of traditional knowledge, and provide Indigenous communities more tools to commercialize traditional knowledge, materials, designs and processes.

Although there are a number of examples of effective participation by Canadian Indigenous communities, the Canadian government has acknowledged the lack of participation in Canada’s intellectual property protection schemes by Indigenous persons and communities, the barriers to participation by Indigenous persons and communities, and the need for engagement, education and awareness. Legal reform does not appear to be on the table, despite other commonwealth countries taking steps towards addressing the intersectionality of Indigenous legal orders and commercialized intellectual property schemes, such as New Zealand’s incorporation of Maori offense into its trademark scheme.

There are a number of complexities and tensions within the intersection of Indigenous legal orders and intellectual property regimes, including the square and circle of Indigenous understandings of custodial, collective, and kinship based systems of traditional knowledge (such as Gitxsan law’s hereditary family crests), and Western conceptions of intellectual property as commercialized, individual ownership. Additionally, the variance between individual Indigenous community legal orders respecting traditional knowledge is significant and poses its own unique challenges.

Want More?

MT+Co. is exploring this topic further and intends to follow up with a more detailed blog in the coming weeks. Stay tuned, and if you have any thoughts on the subject we would appreciate hearing from you. Get in touch here or reach out to Hannah directly.