Canada’s new harmonised trade mark regime

30 July 2019

The new trade mark regime which came into effect on 17 June 2019, brings Canadian trade mark law into alignment with the Singapore Treaty, the Madrid Protocol and the Nice Agreement.

As a result of Canada joining the Singapore Treaty, the Madrid Protocol and the Nice Agreement, Australian businesses selling goods and/or services in Canada can now obtain trade mark protection more cost effectively.  In summary, access to the new regime means that:

  • Canada can now be designated in any new international application filed under the Madrid Protocol;
  • If you have any pending international application or registration filed under the Madrid Protocol, you can add Canada as a subsequent designation;
  • Procedures for registration will be more simplified and standardised;
  • You can also now protect new types of trade marks such as shape, sound, smell, taste, texture, hologram, single colour or colour combinations, 3D and moving images; and
  • A new classification system will be used to categorise goods or services, making it easier to search and compare different trade marks.

The new regime has also brought with it some changes to registration. These include:

  • Removal of Declarations of Use requirement to secure registration;
  • Elimination of requirement to claim a specific use basis for trade mark applications; and
  • The registration term will change from 15 years to 10 years (although, the 15 year term will still apply to registrations with a renewal date prior to 17 June¬† 2019.

If, you would like to seek protection for your trade marks in Canada, please contact Helen Kavadias on 02 9138 2905 or hkavadias@hwle.com.au.

This article was written by Helen Kavadias, Partner.

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