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Impending changes to trademark law: why you should consider registering yours sooner, rather than later

Published by CME Manitoba on August 10, 2017

Impending changes to trademark law: why you should consider registering yours sooner, rather than later

Silvia de Sousa is an intellectual property lawyer with Thompson Dorfman Sweatman (TDS) Law. 

The Government of Canada has been overhauling Canada’s trademark laws in an effort to modernize its intellectual property (IP) framework.

The Trade-marks Act has been updated, with some notable amendments many were hoping would be addressed in the regulations. However, with the first draft of the updated regulations now released, it appears cause for concern remains. 

Under the current system, anyone who files a trademark application must provide a date of first use or a declaration of use with respect to their trademark prior to registration, unless they are relying on the registration and use abroad basis which is not common. 

The amendments to the Trade-marks Act have eliminated the pre-registration statement of use requirement, and the first draft of the regulations, released by the Government of Canada on June 19, 2017, does not address the issue. Thus, it appears under the new system that a person may file a trademark application without any declaration or statement regarding use. This change in the use requirement has caused significant concern about an uprising of “trademark trolls”: those who register a trademark in an effort to prevent legitimate registrations, or to sell the trademark at an inflated price to the businesses that would be entitled to the trademark but were not fast enough or aware of the impending changes to trademark law. 

Another change on its way is the classification of the goods and services associated with a trademark that need to be described in a trademark application. Currently, goods and services need only be described in ordinary commercial terms in a trademark application. In order to comply with the Nice Agreement, an international treaty being adopted by Canada pursuant to the amendments to the Trade-marks Act, a trademark applicant will be required to include the classes under which the goods and services fall within the Nice Classification System. The current system, which includes a $250 online filing fee regardless of the number of classes listed in the application, may be replaced with a $330 filing fee for the first class together with $100 for each additional class listed in the trademark application. On average, a trademark application has at least three classes.

With the weakening standards for who can obtain a trademark and the potential increase in cost, businesses would do well to consider registering their trademarks before the new laws come into force. The Canadian Intellectual Property Office is predicting that the new amendments to the Trade-marks Act and regulations will come into effect early 2019. 


About the author

Silvia de Sousa is a lawyer with Thompson Dorfman Sweatman LLP (TDS). Silvia’s practice is concentrated in the area of business law with an emphasis on intellectual property law, life sciences law and technology law.

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