Legal updates and opinions
Post Author
News / News
Trade marks: changes to the Canadian trade marks act
On 17 June 2019 the Canadian Trade Marks Act will be introducing several changes pursuant to it joining the Madrid Protocol. The most significant changes are set out in the below table:
| CURRENT | AMENDMENT AS OF 17 JUNE 2019 | |
| I | A Declaration of Use of the mark in Canada is required to attain registration. | The “Use” requirement will be removed with no requirement to state a date of first use of the mark in Canada and registration and use abroad. |
| II | There is no Classification system thereby allowing for wide specifications and the payment of a fee for one class. | The International Nice Classification system will be introduced, separating goods and services also requiring the payment of Government fees per class. |
| III | The renewal term is fifteen years. | The renewal term will be reduced to ten years subject to the following:
|
| IV | International designations are not possible. | Canada will join the Madrid Protocol allowing international applications with a centrally administered system, designating member states in which they also want to obtain national protection. To do so the Canadian applicant must already own a domestic (i.e. Canadian) registration. |
| V | The Registrar does not recognise divisional applications. | It will be possible to divide applications permitting non-contentious portions of trade mark applications to proceed to registration while the remainder of the application undergoes examination. |
| VI | Non-use cancellation proceedings cannot be restricted to certain goods and services in a registration. | Non-use cancellation proceedings may be restricted. The non-use term remains three years from date of registration. |
CONSIDERATIONS
- It is anticipated that by removing the requirement to show “Use” that there will be a significant increase in trade mark applications with the result that trade mark owners will need to be even more vigilant, possibly introducing watch services if not yet in place.
- If it is possible to file a Declaration of Use of the mark prior to 17 June 2019 this is recommended attaining a 15 year term of protection as oppposed to the new 10 year term.
- Trade mark filing costs will increase if the goods and services fall within more than one class. Should Canada be a territory of interest, it may prove more cost effective to file the trade mark application prior to 17 June 2019.
- Trade marks will also include marks such as colour or a combination of colours, taste, textures, scent, sound, moving images, holograms and 3D shapes.
If you would like to learn more about Intellectual Property please visit our practice area page.
Latest News
Have Cross-Border Payments for Royalties and Fees Become Less Stringently Controlled?
by Khanyisa Tshoba, Associate and reviewed by Deon Griessel, Director Towards the end of 2024, the Financial Surveillance Department of [...]
CCTV Footage: What the Information Regulator’s Draft Code Means for Surveillance Governance
by Ahmore Burger-Smidt, Director and Head of Regulatory We are rapidly entering the age of no privacy, where everyone is [...]
Section 7C: Sars’s Draft Interpretation Note Signals Assertive Approach to Wealth Transfers
by Ernest Mazansky, Director: Werksmans Tax (Pty) Ltd and Amy Murphy, Candidate Attorney On 26 November 2025, SARS published a [...]
Supreme Court of Appeal Ruling on Foreign Trustee Recognition and Cross-Border Surplus Distribution
by Brendan Olivier, Director In a recent decision, Scheer v Wagner NO and Others, the Supreme Court of Appeal considered [...]
South Africa’s Digital Markets Regime Has Arrived and it Lives Inside Competition Law
by Ahmore Burger-Smidt, Director and Head of Regulatory The debate about whether South Africa should regulate digital platforms is over. [...]
When Fuel Costs Become the Inflection Point
by Eric Levenstein, Director and Head Insolvency & Business Rescue and Amy Mackechnie, Senior Associate Rising fuel prices are once [...]
