It seems that Canada will soon be overhauling its trade mark
law. The Canadian Trademarks Office is anticipating that the
new law will be in force in early 2019.
The changes will be the most significant to Canadian trade
mark law in more than 50 years. The good news is that, with
these changes, Canadian trade mark applications will be
simplified and more harmonised, looking increasingly like
Summary of the main changes
Trade mark applications will be simplified and will no
longer include a date of first use. Details of use and
registration of the mark abroad will also no longer be
Canada will become a member of the Madrid Protocol.
New non-traditional marks
The definition of a trade mark will be greatly expanded to
cover anything that functions as an indicator of source and
will include any "sign, or combination of signs" that serve
that purpose. As a result, protection will be available for
traditional and non-traditional marks including a word, a
personal name, a design, a letter, a numeral, a colour, a
figurative element, a three-dimensional shape, a hologram, a
moving image, a mode of packaging goods, a sound, a scent, a
taste, a texture or the positioning of a sign.
It will finally be possible to divide applications in
Canada, which will be of strategic assistance during
prosecution and in some oppositions.
No more declarations of use
A declaration of use will no longer be required. This will
apply to all pending applications.
Term harmonised with other countries
The term of registration will be reduced from 15 to 10
Letters of protest
Third party correspondence (i.e. letters of protest) will be
permitted during prosecution.
No more registration fee
The government registration fee will be eliminated.
The Nice Classification of goods and services will be
adopted (classification is currently voluntary).
Fees per class
Consistent with the rest of the world, fees per class will
Some examples of the new fees include:
- Trade mark application filing fee:
- $330 CAD (USD 259) for the first class
plus $100 CAD (USD 79) for each additional class instead of
the current $250 CAD (USD 197) filing fee regardless of the
number of classes.
Multi-class applications should therefore be
filed prior to the implementation of the new law to avoid this
significant fee increase for multi-class applications.
- Registration renewal fee:
- $400 CAD (USD 314) for the first class
plus $125 CAD (USD 98) for each additional class instead of
the current fee of $350 CAD (USD 275) regardless of the
number of classes.
Registrations renewed prior to the
implementation of the new law will not be subject to the
higher, per-class fees. Accordingly, renewals should be
considered prior to the implementation of the new law.
What should Europeans consider prior to the implementation
of the new Canadian trade mark law?
A few key strategies can be employed during the months that
remain before the new law takes effect in order to both obtain
maximum benefit from the current legal landscape for trade
marks in Canada and to positively position European brand
owners for the upcoming new law:
- File multi-class applications before new law is
implemented. This will save fees.
- Renew registrations before the new law is implemented.
This will save fees
- File applications to register sound marks
now. Currently, they can be registered with no evidence of
distinctiveness. However, under the new law, applicants will
have to prove distinctiveness
- Protect important brands in Canada as soon
as possible, before a troll does.
Beware of trolls
Historically, trolls (or squatters or pirates) were not a
problem in Canada. Sadly, the trolls have arrived.
In some cases, trolls apply to register trade marks in one
country that are used by brand owners in other countries with
the goal of forcing those owners to negotiate with the trolls
when they enter the new market. In light of Canada's current
trade mark application requirements, this was not previously a
serious problem. However, with the announcement that the trade
mark amendments will eliminate the use requirements to obtain a
trade mark registration, trolls have begun to capitalise on the
New data shows that seemingly baseless applications filed by
trolls are already on the rise.
What is happening?
In 2017, there was a sharp increase in the number of
applications filed in all 45 classes. Trade mark applications
listing all 45 classes immediately produce suspicion, since it
is unlikely that any one individual or business has a genuine
intention to use a trade mark in association with every class
of goods and services.
As of December 2017, there were 427 of these all-class
applications on the Canadian database. Of those, four were
filed in 2015 and six were filed in 2016. The remaining 417
all-class applications were filed in 2017, representing a huge
increase. The majority of these all-class applications appear
to be held by known trade mark trolls. Among the suspicious
applications are those seeking to monopolise established brand
names. These applications are currently pending.
While the ultimate intentions of these trademark trolls are
unclear, this activity is troubling and is already creating
problems for brand owners. There have been many instances of
these troll applications being cited against the legitimate
applications of brand owners. Overcoming these citations can be
Why have the trolling activities already started? There are
Firstly, all of the applications mentioned above were filed
based on proposed use in Canada. Currently, applicants who file
based on proposed use must eventually declare that they have
used the mark in Canada prior to obtaining a registration.
However, once the new trade mark law comes into force, it will
no longer be necessary to file any declarations of use.
Secondly, as noted above, Canada does not currently have a
per-class filing fee. Rather, the fee to file a trade mark
application is the same whether it contains one class or 45.
However, once the changes are implemented, Canada will adopt a
fee-per-class system for new applications. As a result, there
are significant cost advantages to filing multi-class
applications now rather than waiting until the amendments come
into force. Once the new law comes into force, the cost to file
a 45 class application will rise from $250 to $4,730 CAD.
What should be done?
As the implementation of the amendments approaches, we will
undoubtedly continue to see an increase in trolling activity.
Accordingly, it is important for companies to review their
Canadian portfolios now to ensure that all important marks are
protected, whether by filing new applications or maintaining
existing registrations. Similarly, European brand owners should
consider proactively filing applications in Canada as soon as
(or even before) they contemplate entering the Canadian
It is also important to regularly monitor the Canadian
Trademarks Office database to identify trolling applications as
soon as possible, so that more options are available to defeat
them. Since the trolls have already arrived and appear to be
sophisticated, brand owners should be prepared to engage in
oppositions and expungement proceedings in order to protect
their trade marks.
Patents and changes associated with the Canada-European
Union Comprehensive Economic and Trade Agreement (CETA)
Amendments to the Patent Act and associated regulations came
into force on September 21 2017, giving effect to Canada's
obligations under CETA. There are significant changes,
particularly with respect to pharmaceutical patent law.
Firstly, Certificates of Supplementary Protection (CSPs)
were introduced, providing for restoration of patent term to
account for marketing delays resulting from time required to
obtain regulatory approval. The maximum term of a CSP is two
years, substantially less than the maximum five year term under
the European Supplementary Protection Certificate (SPC) system.
The Canadian CSP regime includes an export exemption, such that
it is not an infringement of the CSP to make, use, or sell the
medicinal ingredient, or combination of medicinal ingredients,
for the purpose of export from Canada. In contrast, the
possibility of an SPC manufacturing waiver is only currently
being considered in Europe, as reflected by the recent public
consultation on SPCs held by the European Commission.
It is important for European applicants to be aware that a
CSP is only available if the Canadian application for marketing
authorisation is filed within 12 months of the first
application for marketing authorisation in any part of European
Union, the United States, Australia, Switzerland, or Japan. It
therefore may be necessary to revise regulatory approval plans
for Canada in order to benefit from a CSP.
Only a single CSP can be issued in connection with a
marketing authorisation. A priority regime, based on the date
of patent grant, determines CSP eligibility when there are
multiple applicants. European applicants therefore should
consult with their Canadian representatives with respect to
measures for expediting grant of patents for which a CSP will
The CETA changes also comprehensively alter the regime that
has governed pharmaceutical patent litigation in Canada for
nearly 25 years. The summary proceedings previously in place,
in which an innovator seeks an order from the Federal Court,
enjoining the Minister of Health from issuing marketing
authorisation to a second person, has been replaced by a full
right of action, with accompanying procedural guarantees and
discovery obligations. The new regime is intended to provide
equivalent and effective rights of appeal to all litigants (the
previous summary proceedings were moot once marketing
authorisation was issued), and to end the practice of dual
litigation, where a full patent infringement action followed
All-class applications filed per year
Changes associated with the Patent Law Treaty (PLT)
Amendments to the Patent Act and Patent Rules are
anticipated to come into force perhaps as soon as 2019, largely
for compliance with the PLT. These amendments will simplify and
harmonise a number of administrative practices. Separate from
the PLT requirements, the Patent Act and Rules will be amended
to provide improved protection for applicants and patentees
during force majeure events such as floods or power failures,
which prevent them from communicating effectively with the
Significant changes under the amended Patent Act and Rules
that will be of interest to European applicants and
practitioners include the following:
Reduced requirements to obtain a filing
It will be possible to defer payment of the filing fee and a
translation of the application into English or French. It will
also be possible to defer filing a specification at all by
instead making reference to a previously regularly filed
24/7/365 electronic filing
A filing date may be secured on a day when the Patent Office
is closed for business (e.g. Saturday or Sunday) if the
application is filed by electronic means.
Addition to specification or addition of
A procedure is introduced whereby the applicant may add to
the specification or add a drawing, without loss of the
original filing date, if the addition is wholly contained in a
priority document, and the addition is made within two months
from filing, or within two months from notice by the
commissioner of patents that part of the application appears to
Restoration of priority
Restoration of priority is introduced, such that it will be
possible to claim priority to a previously regularly filed
application filed up to 14 months before the Canadian (or PCT)
filing date, if the request is made within the same time
period, and the applicant states that the failure to file the
application in a timely manner was unintentional.
Shortened term for national phase entry
A PCT application must enter the Canadian national phase
within 42 months from the priority date, although an additional
late fee is payable if the applicant enters the national phase
more than 30 months from the priority date. Under the proposed
Rules, the late entry option is removed. If the applicant fails
to enter the national phase by the 30 month deadline, it is
still possible to do this within 42 months of the priority
date, but only upon submitting a declaration that the failure
to enter the national phase in a timely manner was
unintentional and a statement of the reasons for the failure,
and if the commissioner of patents determines that the failure
Extension of time limits in unforeseen
The amended patent regime will provide greater flexibility
to deal with floods, power failures and other unforeseen
circumstances by permitting the commissioner of patents to
extend time periods on account of unforeseen circumstances, if
the commissioner is satisfied that it is in the public interest
to do so.
Notice of certain deadlines prior to
abandonment or expiry
The Patent Office will be obliged to provide notice that
certain deadlines have been missed before an application is
deemed to be abandoned. Notice will similarly be required
before a patent is deemed to have expired for non-payment of a
Due care standard for reinstatement in some
Canadian patent applications become abandoned if action is
not taken by the prescribed deadline. At present, the
application may be reinstated by request, paying a fee, and
taking the omitted action within 12 months of the date of
abandonment. That is, reinstatement is as of right. Under the
amended Act and Rules, the requirements for reinstatement will
be more stringent in certain cases where abandonment only
occurs after notice of the missed deadline–namely
missed payment of the examination fee or a maintenance fee. In
such instances, a due care standard will apply if reinstatement
is effected more than six months from the original deadline.
The applicant must state the reasons for the failure to take
the action that led to abandonment, and the commissioner must
determine that "the failure occurred in spite of the due care
required by the circumstances having been taken." What
constitutes "due care" is currently unknown. Reinstatement
under the due care standard may be subsequently challenged in
Payment of maintenance fees
Currently, only the Canadian patent agent may pay a
maintenance fee on a pending application. This will change such
that anyone, such as an annuity service, can pay maintenance
fees on pending applications, as is presently the case for
Third party rights
An exception from infringement of a patent is introduced for
otherwise infringing acts that a third party, in good faith,
first committed or made "serious and effective preparations" to
commit during a prescribed period after an applicant or
patentee failed to request examination or pay a maintenance fee
by the original deadline. It will be for the courts to clarify
what constitutes "serious and effective preparations" to commit
an infringing act. The application of third party rights may be
avoided by taking action within six months of the original
Already in force since June 2016 are amendments to the
Patent Act and Trademarks Act, establishing privilege for
communications between clients and their patent and trade mark
agents. Importantly, such privilege extends to communications
between foreign patent and trade mark agents and their clients
in jurisdictions which similarly recognise such privilege.
Accordingly, this protection may extend to communications
between European patent and trade mark attorneys and their
clients, if those communications are privileged under European
European trade mark and patent owners should make
preparations now in order to best accommodate and benefit from
the changes to Canadian IP laws. Indeed, in some instances,
action may be warranted before the new laws come into
Trade mark applicants may wish to take advantage of the
current low trade mark application filing fees and registration
renewal fees available before the new law is in force. As well,
companies may wish to ensure that their important brands are
protected in Canada to defend themselves against trolls.
Patent applicants must be mindful that it will no longer be
possible to enter the Canadian national phase of a PCT
application as a matter of right more than 30 months from the
priority date. Pharmaceutical patentees seeking a CSP will need
to ensure that their application for marketing authorisation in
Canada follows within 12 months of the first application for
marketing authorisation abroad and should aim to expedite
prosecution of the relevant Canadian patent application.
The preceding is intended as a timely update on Canadian
intellectual property and technology law. The content is
informational only and does not constitute legal or
professional advice. To obtain such advice, please communicate
with Smart & Biggar's offices directly.
||Philip Lapin is a
partner in Smart & Biggar’s Ottawa
office. He is the chair of the Smart &
Biggar’s trademark operations group and is
recognised as one of Canada’s leading trade
mark lawyers. With more than 20 years of experience,
Philip is responsible for managing and providing
strategic advice concerning the trade mark portfolios of
many Canadian and multinational corporations. He has
handled the clearance, prosecution and registration of
thousands of trade marks, and has particular expertise in
trade mark opposition and cancellation proceedings before
the Trademarks Office. In addition, Philip files,
prosecutes and advises clients with respect to all
aspects of Canadian industrial design law and practice.
He is listed in World Trademark Review 1000,
Euromoney’s Expert Guides: Guide to the
World’s Leading Trademark Law Practitioners
and Managing Intellectual Property’s IP
Stars Handbook: Trademark & Copyright.
||David Schwartz is a
partner in Smart & Biggar’s Ottawa
office. His practice focuses on patent law in the fields
of biotechnology, pharmaceuticals and chemistry, as well
as plant breeders’ rights. David advises on
regulatory matters relating to the Patented Medicines
(Notice of Compliance) Regulations, data protection under
the Food and Drug Regulations and matters concerning the
Patented Medicine Prices Review Board. He appears
regularly in oral proceedings before the Patent Appeal
Board and has handled first-to-invent conflicts under the
pre-1989 Patent Act. David has testified on patent law
reform before both the House of Commons Standing
Committee on Industry, Science and Technology and the
Senate National Finance Committee, and has lectured on
patent law at Queen’s University and the
University of Ottawa. In 2013 he was named LMG Life
Sciences Canadian Patent Attorney of the Year and Best
Lawyers 2016 Biotechnology Law Lawyer of the Year in
Ottawa. David is a past president of the Intellectual
Property Institute of Canada.