New Trademark Law Coming into Effect in Canada

By Audrey Roorda  |  May 6th

On June 17, 2019, new rules for registering trademarks will come into effect that make it more difficult – and more expensive – for schools to protect their brand.

A trademark can be a word, phrase or design and is an important part of the school’s brand. Registering it gives the school the exclusive right to use it to sell their services and keeps others from confusing customers by using something similar in their business. The Canadian Intellectual Property Office fact sheet (https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/vwapj/ip_academy-trademarks.pdf/$FILE/ip_academy-trademarks.pdf) gives a good summary of what a trademark is and why you should register it.

The new rules include several significant changes:

1. Trademark applicants will no longer be required to indicate if the trademark has previously been used in Canada before it can be registered.
2. The definition of “trademark” will be greatly expanded to include non-traditional trademarks, such as colours, holograms, moving images, sounds, scents, tastes, and textures.
3. Canada will become a member of the Madrid Protocol that will allow applicants and registrants to obtain international registration of trademarks in any of the 102 member countries.
4. The Nice Classification of goods and services will be adopted and, as a result, applicants will be required to classify goods and services in accordance with the classification system.
5. A class-based government fee system will be introduced for filing and for renewal.
6. Trademarks will be examined for distinctiveness which will make it more difficult to register them.
7. The term of registration will be reduced from 15 years to 10 years.[1]

Removing the requirement that the trademark be used prior to registration opens the door for trademark “trolls” to search for and register logos or taglines they find online, and then try to sell them back to the legitimate owners. According to the Canadian Intellectual Property Office “over 500 trademark applications have been filed covering all 45 classes of goods and services and nearly 100% of those applications were filed by trolls, likely with the intent to extort money from legitimate trademark owners that have not filed applications.”[2] However, there is also an amendment (Bill-C86) that prevents owners from making any claims in the first three years after registration if they haven’t used the trademark in that period.

If a trademark is not registered, you can come to own it according to common law after using it for a period of time[3] However, if the ownership of the trademark is challenged, you would need to go to court to get it back, costing the school money in lawyers fees and time. If the trademark was taken by a troll, it may be cheaper to simply purchase the trademark back (but not cheaper than registering the trademark in the first place).

Increase in Fees

“The current government flat filing fee of $250 CAD, regardless of the number of classes, will soon be replaced by a $330 CAD filing fee per class, plus $100 CAD for each additional class of goods and services.”[4] Schools may wish to consider reviewing their trademarks before the renewal date of June 17, 2019 and begin filing trademark applications while the filing fees are at the rate. Consider filing for a broad range of classes as well, since it is a flat fee for any number of classes.

Also, since the registration term will be reduced from 15 years to 10 years, there is an inherent increase in the fee since the term is less. Trademark registrations can be renewed up to a year prior to the renewal date, so it is recommended that schools with a renewal date in the next year renew their registration before the amendments are implemented to take advantage of the 15-year renewal period still in effect.

[1] Carters, Barristers, Solicitors, Trademark Agents, Charity & NFP Law Update, November 2018, “Date Set for New Trademark Law in Canada”, pp 12, http://www.carters.ca/pub/update/charity/18/nov18.pdf#sb1, accessed April 2, 2019

[2] Ibid

[3] Government of Canada, A Guide to Trademarks, Registered Trademark VS. Unregistered Trademark, http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr02360.html#useInCanada, accessed April 2, 2019.

[4] Carters, Barristers, Solicitors, Trademark Agents, Charity & NFP Law Update, March 2019, “Act Soon Before New Trademarks Law Comes Into Effect”, pp 09, http://www.carters.ca/pub/update/charity/19/mar19.pdf#cra2, accessed April 2, 2019

Photo from Alpha Stock Images - http://alphastockimages.com/

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