After around five years of anticipation, sweeping reforms to
the Trademark
Law of Canada had finally come into force on 17th June
2019. Well, these changes that have influenced the Intellectual
Property (IP) industry are many in numbers, and being
familiar with all of them may appear a bit arduous and frustrating. Hence, to
help you to enjoy the trademark rights under the changed law with ease and
without any hurdle, we have summarized some of the most vital changes that
trademark owners and practitioners must consider.
Came into force on 17th June 2019, the following
are some of the crucial reforms made in Canada’s Trademark Law.
1. Registration and Renewal Terms Are Shortened
In comparison to the previous term of 15 years, the
new registration and renewal terms under the reformed rules will be ten years.
It means that any registration issued on or after 17th June is
valid for ten years. Similarly, any registration renewed on or after this date
will have a renewal term of 10 years.
2. More Non-Traditional Trademarks Are Registrable
Under the amended Trademarks Act, the applicants are allowed to
file several types of non-traditional trademarks, most of which weren’t
permitted before. Some of these marks include taste marks, scent marks, and
marks for color per se. However, in almost all cases related to applications
for non-traditional marks, there is a need to provide evidence proving that the
mark was distinctive in Canada at the date of applying.
3. Divisional Applications Are Available
As of the law (rules) amended on June 17th, it is now
possible for the applicants to divide their applications, especially to
overcome objections raised during the prosecution or the opposition. It is one
of the best ways to make one portion of the application to proceed towards
registration while focusing on and removing issues on the remaining ones.
4. Notification of Third-party Rights Are Involved
The Canadian Intellectual Property Office (CIPO) under these
amended rules has revealed an objective to introduce a mechanism to bring third
parties to CIPO’s attention. This part of the amendment is expected to have an
impact on the registration of pending Trademark
Applications in Canada. This mechanism,
although new in Canada, it is similar to the concept of “letters of protest”
available in many jurisdictions.
As the amended rules say, the procedures that do not create an
inter partes proceeding are now limited to three grounds, such as:
·
Mess with any prior-filed application
·
If the registered trademark is used to define products
and services in the application
Apart from this, the amendment says that written arguments or
evidence of prior use will not be considered or accepted.
CIPO also indicated that if the specified mechanism is abused, it
holds the right to dismiss the practice.
5. Section 45 (Non-Use Cancellation) Has Been Targeted
Previously, Section 45 (non-use cancellation) notice
was applicable to be issued against the registration as a whole, even if the
requesting candidate wants to challenge only one portion of the products or
services.
Nevertheless, it is now (after the amended rules came into force)
possible to get Section 45 notice issued against any subset of the assets listed
in the registration. Well, this amendment is expected to result in more
efficient and quicker resolutions of concerns related to such proceedings.
Another remarkable change is that CIPO itself can initiate the
proceedings associated with Section 45. Note that beforehand, such proceedings
were initiated only at the request of third-parties. However, it is still to be
seen how and when CIPO intends to exercise this power.
Are You Ready?
After going through
the above-given statistics, you are now available with almost all the
information needed to obtain Trademark
Registration in Canada. This up-to-date info
will help you in several ways, like preventing rejection of the application, enjoying
all benefits of registration for the complete term, etc. Hence, be confident
and file the trademark application in Canada without any hesitation.
Nonetheless, if there is any doubt, then it is better to consult any
experienced Intellectual Property Law Firm or Trademark Attorney before
proceeding. For more visit: https://www.kashishipr.com/
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