Since 2015 the Canadian government has been preparing for its accession to the Madrid System for the international registration of trademarks and has, to this end, adopted decisions and developed internal legal mechanisms to adapt to international trademark system standards. It has signed up to three core international treaties in the area of trademarks: the Protocol relating to the Madrid Agreement concerning the International Registration of Trademarks, the Singapore Treaty on the Law of Trademarks and the Nice Agreement concerning the International Classification of Goods and Services.
On this premise, the Canadians have passed a new national trademark law, which is set to come into force on 17 June 2019.
The new law introduces important changes, which will undoubtedly simplify the procedures for trademark protection considerably in what until now has been a highly complex jurisdiction and which will, to some extent, move away from the common law systems and towards a more European legal framework.
The most significant change is the elimination of the requirements concerning use or intent to use in trademark applications, and the derogation of the requirement to submit a declaration of use to secure the registration of a trademark. Thus, in June of this year, Canada will move over to a “first to file” trademark system and abandon its traditional common law “first to use” system.
Below are some of the key features that will form part of trademark practice in Canada from 17 June 2019:
- The international trademark registration system will be an option for the internationalisation of trademark rights.
- Trademark applications filed from 17 June will not have to invoke any filing basis that would give rise to dependency and they will be registered without the need to declare use beforehand.
- However, it will be mandatory to specify goods and services in accordance with the Nice Classification, which will increase the costs of protection, due to the implementation of a class system.
- The duration of trademarks is significantly reduced, since the current duration of 15 years will change to 10 years, in line with most trademark legislation and the Madrid Protocol.
- From the entry into force of the new law, there will be two important consequences for the next renewal of a trademark: its duration will be 10 years and its list of goods and services will have to be brought into line with the Nice Classification.
- While the declaration of use will no longer be a sine qua nonrequirement for the registration of a trademark, it will be possible to request proof of use when enforcing and defending rights, for example, in the course of cancellation or opposition proceedings.
It appears that Canadian lawmakers have opted for a very practical transition during the change, seemingly wishing to avoid an awkward coexistence of two systems (the old system and the new system) and the difficulties involved in the administration of transitional periods.
Moreover, Canada joins the group of 120 member countries of the Madrid System for the international registration of trademarks. A nice number for a long-awaited accession that will make the internationalisation of trademark rights easier for Canadians and, hopefully, also provide an incentive to explore our European markets.Author: Cristina Arroyo