What Business Owners Should Know About Canada’s New Trademark Laws

by | Jan 20, 2019 | Law and Business

Canada hasn’t revised its trademark laws since 1952, but this year, new Canadian laws will go into effect that will not only address changes in technology and the trademark needs that come with those advancements, but also will make Canada’s trademark laws more globally compatible.  Most importantly, Canada will now utilize the Madrid Protocol, a treaty like process that allows mark holders to file a trademark in almost every country in the world at the same time, without having to submit the application to each and every country of the filing. Canada was one of a very few countries (e.g. South American countries) that did not utilize the Madrid Protocol (The new laws are similar to U.S. trademark laws that in December allowed Zippo to trademark the distinctive sound its iconic lighter makes when clicked.)
Canada’s new trademark laws significantly expands the classic definition of a trademark. The new laws that go into effect on June 19 and are more relaxed than previous trademark laws, which were seen as significantly stiffer than those in other countries.
The new regulations should simplify the process for businesses in the United States seeking to trademark a product – or a more tech-driven concept – in Canada. While experts warn that the simplified process could open the door to litigation – a date of first use will no longer be a requirement of a Canadian trademark application, which copycats could take advantage of when filing – it also speeds the application process.

Some changes to note:

  • Canadian trademark terms of use will now be 10 years for new registrations. Those trademarks that were previously registered for 15 years will retain those terms.
  • New applications will not be required to pay a government registration fee.
  • As discussed above, Canada will now be part of the Madrid Protocol, which allows someone filing a trademark application to file a single international application that covers all of the countries that are part of the Madrid Protocol. The Madrid Protocol went into effect in the United States in 2003. (Click here to find out which other countries in addition to the U.S. and Canada are part of the Madrid Union.)
  • A Declaration of Use will no longer be required for trademark applications, not just for new applications, but pending applications as well.
  • Canadian trademark regulations will also fall under the international Nice Classification of goods and services, established in 1957 and regularly updated to accommodate new product categories. There are currently 45 different classes for goods and services under the Nice system.
  • Fees will change, and applicants will pay a $200 (Canadian dollar, or CAD) registration fee for declaration of use and various additional fees depending on the Nice Classification of goods and services. For example, first class trademarks will be $330 for the first class plus $100 for each additional class. Because Canada previously did not follow the Nice Classification system, fees were $250 Canadian dollars regardless of the class
  • To renew a trademark, registration fees will be $400 for the first class and $125 for each additional class, up from the current fee of $350, again to reflect Canada’s participation in the Nice Classification system.

Contact EmergeCounsel
At EmergeCounsel, we have the experience needed to help your business secure marks in  Canada successfully due to our wealth of knowledge about the nation’s trademark laws and the changes coming in the next few months. If you are planning on expanding your business north of the border, please contact us today to find out more about how we can help make the trademark process easier!  Experienced marketers generally believe that a Canadian strategy is a must because of its geographic proximity, its place as the United States’ largest trading partner and its ability to quickly add 10% of eligible consumers to an American business.


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