Cassan Maclean
Intellectual Property | Barristers, solicitors, patent and trademark agents




In last week’s post we reported June 17, 2019 as the date on which legislative amendments to the Trade-marks Act will come into force.  These legislative amendments will have a significant impact on trademark practice in Canada. Some of the more notable changes include: 

  • Canada will join Madrid Protocol allowing for registration of trademarks in Canada by way of an international application;

  • It will be possible to register as trademarks non-traditional subject matter such as scent, taste, texture and single colours without delineated contours;

  • Filing bases and declarations of use will no longer apply;

  • Registration and renewal terms will be shortened from 15 to 10 years; and

  • There will be mandatory classification of goods and services in accordance with the Nice Agreement with the application of per class fees.

 In view of these upcoming changes, applicants may wish to consider:

  • filing applications before the coming into force (“CIF”) date, particularly if the applications cover multiple classes of goods/services to avoid the higher costs associated with per class filing fees. 

  • paying renewal fees before the CIF date, particularly for registrations covering multiple classes of goods/services, to avoid the higher costs associated with per class filing fees.

  • increasing use of trademark monitoring/watching services in light of the potential increase in trademark troll/squatting activity.

  • grouping and classifying goods and services now, particularly for pending applications that are not likely to be advertised before the CIF date to avoid unnecessary delay in the prosecution of the application.

  • reviewing and evaluating trademark portfolios to assess whether there are any marks which may fall under the expanded scope of registrable subject matter after the CIF date; and

  • for Canadian clients - reviewing trademark portfolios and foreign filing strategies to assess the merits of proceeding with international registration under the Madrid Protocol.

 For a more detailed explanation of the anticipated changes and the practical tips for managing Canadian trademarks going forward, please click here for our detailed information circular and/or contact one of the trademark professionals at Cassan Maclean IP Agency Inc.