2019 Will Go Down In History As 'The Year Of Change' In Canadian Trademark Law Part II

2019 was a year of unprecedented change in Canadian trademark law and practice, with major amendments to the Trademarks Act and Regulations that change many aspects of trademark practice, and the issuance of many decisions by the Trademark Opposition Board and Courts that will impact brand registration and enforcement. Part II of Bereskin & Parr's 2019 trademark review summarizes some of the most important developments relating to trademark filing, prosecution, oppositions and non-use cancellation proceedings.

1. 2019: TRENDS IN TRADEMARKS FILING AND REGISTRATION

   While the amendments to the Trademarks Act have been in effect for only a little more than 6 months, the impact of those amendments can be seen in the following trends and developments:

   When will I hear from the Trademarks Office? The Trademarks Branch of the Canadian Intellectual Property Office (CIPO) is backlogged - first examination now occurs about 16 months after filing. New examination staff have been hired, with more staff additions planned for 2020, but significant delays are expected to last throughout 2020. How long will registration take? It is not unusual for registration to take more than three years. The elimination of filing grounds and related formalities should shorten this timeline. CIPO is also considering changes to current practices on extensions of time and multiple rounds of objections and responses, with the result that it may be more difficult to extend examination deadlines, and applicants will no longer have as many “kicks at the can” to overcome registrability objections. More news on these changes is expected in early 2020. What's this new examination issue and why was it not raised earlier? The amended Trademarks Act introduced a new ground of examination, namely that the mark is considered to be “not inherently distinctive”. This applies both to new applications filed since the Act was amended on June 17, 2019 and to applications that were pending but not yet advertised for opposition as of that date. Distinctiveness objections are being made with surprising frequency - CIPO has admitted to raising the issue “a lot”. CIPO has held info sessions on its approach to this new ground, but for now, it is too early to predict the likelihood of an objection, the chance of overcoming it, or the nature of evidence required to show that the mark has, through use, become distinctive in Canada.

   TIP: For now, unless marks are clearly coined words or devoid of name or descriptive connotations, there is a high likelihood of objections based on “no inherent distinctiveness”. There can be significant time and cost implications to argue against the objection or, if necessary, prove distinctiveness. For brands at risk of distinctiveness objections, applicants should consider filing in combination with other words/designs. This is especially the case for recently adopted marks for which there would not be sufficient evidence to prove acquired distinctiveness.

   Class Act - How CIPO calculates fees on filing and renewal: Fees are now payable based on the number of classes of goods and services at the time of filing and renewal (the renewal term is now 10, vs. 15, years). CIPO filing fees are $330 CA for the first class and $100 CA for each additional class, and renewal fees are $400 CA for the first class and $125 CA for each additional class. While applicants and registrants can initially pay only a single class fee, they will subsequently be required to pay the full amount based on CIPO's classification of the goods/services. Brand owners cannot lower those fees by later removing goods/services to reduce the number of classes in the application or registration.

   Trademark Agents to the Rescue: Under the amended Trademarks Act, “any person” can pay renewal fees. However, CIPO will send correspondence relating to classification only to the registrant or its recorded Canadian trademark agent. Most registrations now subject to renewal have not yet been formally classified to the satisfaction of CIPO, so for the next several years, it is likely that there will be many renewal-related classification issues.

   TIP: Companies who appoint non-agent entities to handle portfolio management tasks such as renewals may find the renewal process complicated by these changes. While a renewal request may appear at first to have been processed, there can be subsequent steps relating to classification and additional fees, and failure to respond or comply within CIPO's deadlines can result in expungement. Brand owners may find it simpler to have a registered Canadian agent handle both renewal and classification.

   Hola Madrid! Impact of the Madrid Protocol on trademark filings: Joining the Madrid Protocol is already having an impact on Canadian filing procedures and numbers. While the total number of applications filed in Canada in 2019, compared to 2018, increased only modestly (about 3%), a significant number are as a result of territorial extensions under the Madrid System - where registrants and applicants from other countries may designate Canada as a country for trademark rights by filing an application for an international registration with the World Intellectual Property...