Understanding Canada’s New Trademark Law: Part 2

In our previous blog, which served as part 1 of this blog, we outlined some of the significant changes that the Canadian Government brought into effect on June 17th, 2019 in relation to trademarks. You can click here to read the first part of the blog.

According to the NICE classification, the system will require trademark owners to classify all the services and goods associated with every mark. All renewals and new applications processed according to the trademark laws are classified, and associated fees for each class need to be paid before registering or renewing your trademark.

For trademarks that have not yet been advertised, you can expect to receive a notice requiring that the goods and services be properly classified before advertisement will take place.

The definition of trademark has been broadened to include non-traditional trademarks of taste, colour, moving images, sounds, textures, holograms, and other signs used to identify a brand. Existing categories of trademarks like design marks and word marks will continue. The previous mark type of various distinguishing guise is now registerable as a mode of packaging goods or a three-dimensional shape.

While use is an important aspect of Canadian trademark law, you will no longer be required to submit a declaration of use or claim a basis of use prior to obtaining a trademark registration. To help prevent trademark trolls from filing frivolous law suits, use of the trademark must be shown in any action for depreciation of good will or infringement. Trademark trolls are simply entities or persons who seek trademark protection for the purpose of selling a trademark to a rightfully entitled party or attempt to force license agreements out of potential infringers. A trademark troll generally has no intention of ever using their trademarks in commerce.

The renewal fees and filing fees have increased to correspond with the NICE classification system. The more classes that you goods and services fit into, the more costly your application and renewal will be.

For more information about renewing or filing a new application, contact our team today for a free consultation.