Six Key Trademark Filing and Protection Strategies for Canada in 2018

As 2017 draws to a close and we begin to look forward to the new year, the countdown to the implementation of Canada’s new trademark law begins in earnest. Announced in 2014, Canada’s Bill C-31 is expected to be implemented in full early in 2019. The Madrid Protocol, the Nice Classification system and a myriad of other changes to Canadian law and practice will then be fully in effect.

A very significant change is the removal of the requirement to provide information regarding use of a trademark in Canada during the application and registration process. This will have the effect of making the registration process easier, most likely faster and in some cases less expensive than the current system. However, while the changes will come with benefits, there will be some new challenges as well. A few key strategies can be employed during the months that remain before the new law takes effect in order to both obtain maximum benefit from the current legal landscape for trademarks in Canada and to position brand owners for the upcoming new law:

1.  Search now, to determine the availability of marks for use and registration in Canada. Canada is not becoming a first-to-file country.  The use of a trademark in Canada will remain a key factor for determining the priority of rights to the mark once the new law comes into effect.  However, once new applications which lack any use information are on file, it will be harder to determine which party has entitlement to a mark.  Thus, searching before the end of 2018 may result in cost savings, as without use information marketplace investigations may be necessary in order to determine which party has first Canadian use of the mark.
2. File now, to avoid new requirements for proof of distinctiveness.The new law will include requirements for submitting proof of distinctiveness for sound marks, which are currently available for registration without this limitation.  Moreover, it will be open to an examiner to make a preliminary objection to the registration of a mark on the basis that it is not inherently distinctive.  While it is not yet completely clear under what circumstances the latter provision may be invoked or what form will be required for the submission of proof of distinctiveness, the requirement will undoubtedly increase the cost of the application process in cases where it is applied.
3. File now, to obtain the benefit of a country-of-origin registration.The current Canadian Trademarks Act provides trademark applicants who have a registration in their country-of-origin outside of Canada with a benefit when seeking to register marks in Canada that are descriptive, marks that are the name of the goods or services or marks that fall into the category of a name or surname.  While evidence showing acquired distinctiveness is required in order to register the mark, the extent of evidence that is required is somewhat less than that required when there is no country-of -origin registration.  This benefit will not be included in Canada’s new law.
4. Review your portfolio now, to ensure that your important brands are protected in Canada.The requirement that a mark that is the subject of an application for registration in Canada be used or proposed to be used in this country is embedded in the definition of a trademark in Canada’s new law.  However, there is no requirement to specifically state an intention to use the mark or date of first use of the mark, nor is there requirement for filing Declaration of Use before proposed marks are registered. There is some concern that the new system will be more attractive to those, commonly referred to as pirate or squatters, who wish to register marks for illegitimate purposes.  Whether the change will actually lead to many such applications remains to be seen, but the possibility nonetheless provides a good reason to conduct a portfolio review and ensure that important brands are protected at this point in time.
5. Implement a watch service now, to make sure that you oppose applications when appropriate. A watch service for newly filed and published applications will be more important under Canada’s new law.  Since use information need not be included in an application, filing will be easier and applications will likely proceed quickly. Remaining alert to filings by competitors and possibly illegitimate parties will be advantageous. Making note of and successfully opposing an application before it proceeds to registration will avoid the necessity of expungement proceedings, which require an application to the Federal Court of Canada or non-use cancellation proceedings, which are available only after the mark has been registered for three years.
6. File now, to save on filing fees for brands that span numerous classes of goods and/or services.Canada is currently a bargain for trademark filers, with a flat fee for filings that is unaffected by the number of classes of goods and services included in an application.  Along with the Nice system, the new law will bring a fee-per-class structure.   Filing now will save costs for brand owners who anticipate the need to file for trademarks for goods/services that span multiple classes. 

In summary, Canada’s new trademark law will bring with it benefits for brand owners globally, including the ability to file using the Madrid system and providing a Canadian registration process that will be easier, likely faster and in some cases less expensive.  However, by giving consideration to these six key strategies and planning now, it will be possible to take advantage of some of the benefits of the current law and maximize positioning for the implementation of the new law in the short time remaining before the new law is fully in force.