Canada has amended its Trademark Law, and although the amended Law's effective date is not yet known, brand owners can expect three significant changes to Canadian trademark law practice.
First, to U.S. brand owners and practitioners perhaps the most obvious change is to Canada's unusual "trade-mark," "trade-name," and "wares" terminology – which will be changed to the more familiar terms, "trademark," "trade name," and "goods."
Second, the amended law will require brand owners to file their applications with goods and services divided according to the Nice Classification, an international classification of goods and services that is used in the vast majority of international jurisdictions. Thus, a laundry list such as the one shown below would need to be grouped according to the Nice Classification, and with the International Class number listed before each group (Classes 3, 9, 18 and 25, for those keeping track).
(1) Perfumery; sunglasses; bags, namely evening bags, backpacks, totes, wrist-let, messenger bags,clutch bags and satchels, handbags, purses; wallets; leather; clothing, namely, coats, fur coats, overcoats, trench coats, rain coats, parkas, blazers, jackets, cardigans, boleros, vests, dresses, skirts, pants, slacks, trousers, jeans, sweat pants, shorts, sweaters, pullovers, jerseys, shirts, formal tunics, sweatshirts, t-shirts, halter tops, tank tops, camisoles, chemises, undershirts, leggings, gloves, mittens, swimwear, bathing suits, beachwear; belts for clothing; headgear, namely hats, caps, berets; footwear, namely shoes, boots, slippers, sandals, espadrilles, sneakers, flip-flops; and belts
While it is unknown whether the adoption of the Nice Classification will affect Canada's applicant-friendly filing fees, which currently allow a flat application fee regardless of the number and goods and services, this amendment is a welcome change as it brings Canadian trademark practice in line with the majority of countries, including the U.S. and European countries. In anticipation of this change, brand owners filing in Canada should consider listing their goods and services according to their respective Nice Classification so that they can easily amend the list to comply with the new requirement once it goes into effect.
Finally, the amended law has simplified the registration process by eliminating use of a mark in Canada as a condition to registering the mark. Currently, applicants must include a statement regarding whether they actually use, or intend to use the applied-for mark with the applied-for goods and/or services in Canada. If a brand owner alleges intent to use, a subsequent Declaration stating that the mark is actually in use with the applied-for goods and/or services in Canada must be submitted before the mark can be registered. Under the amended law, no such Declaration is required. Thus, a brand owner may obtain a Canadian registration without actually using the mark with the applied-for goods and/or services in Canada, although registrations are still vulnerable to a cancellation proceeding based on non-use of the mark in Canada.
This article appeared in the June 2015 issue of MarkIt to Market. To view our past issues, as well as other firm newsletters, please click here.