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Scheduled Changes to Canadian Trademark Law will Impact International Trademark Registrations

Businesses will benefit from significant changes made by the Canadian Intellectual Property Office (“CIPO”) under Bill C-31 which has been passed, but scheduled to be implemented in 2018.  Bill C-31 will result in Canada satisfying its international trademark obligations under the Madrid Protocol, the Nice Agreement and the Singapore Treaty.   By Canada adopting these requirements under the international treaties, international trademark registration procedures will be made easier for individuals and businesses.

Changes under Bill C-31 include amendments to the “use” requirement, the classification of goods and services under the Nice Classification system, the term of trade-mark registration which will be reduced from 15 to 10 years, and the expanded scope for opposition proceedings.  Interestingly, although the implementation date is set sometime in 2018, CIPO has already allowed applicants to file under the Nice Classification system.

A notable benefit under these changes will be that businesses having an “international” trademark portfolio will be allowed to file trademark applications under the Madrid Protocol, a centrally administered system in which the applicant can choose the member states in which they seek protection.  In a nutshell, this change will benefit those wishing to have broader international trademark protection as the applicant can file in one language and pay one fee, thereby saving time and costs.

The effect of the implementation of these Canadian trademark law changes will be apparent as they are introduced.  Trademark owners should keep a vigilant eye on how such changes will affect their current trademark rights. In addition, those who have pending applications should consider how the removal of the existing “declaration of use” requirement can affect their trademark registration strategy.

This article was written Jindra Rajwans, a corporate & commercial lawyer based in Toronto, Canada. The information in this article is not intended to be legal advice and is of a general nature. Consult a lawyer for advice for any specific situation.

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