Publications
May 2019
PFD | Intellectual property

The amendments to Canada's Trade-marks Act - Update

By Josée Tourangeau Lawyer

 

 

Removal of the requirement to state the current or projected use when filing an application

Currently, when filing an application to register a trade-mark, the applicant must indicate whether the trade-mark is already used in Canada or a use is proposed in connection with the products or services set out in the application.

Once the amendment comes into effect, applicants will no longer be required to provide this information or the date on which a trade-mark was used for the first time.

The registration process will now be simpler and quicker, since applicants will no longer be required to have begun to use the trade-mark to be issued a certificate of registration. However, seeing as the register will no longer contain details on usage, an owner who seeks to obtain such information before adopting a new trade-mark or filing a statement of objection against a trade-mark must conduct a factual investigation.

 

Removal of the eligibility step in the registration process and the requirement to include a declaration of use

Currently, to be issued a certificate of registration for a trade-mark whose use is proposed at the time of filing, an applicant must file a statement to confirm the start of the use period. This statement is required upon receiving a notice of allowance.

This step will be eliminated. The new steps in the registration process will be filing, examination, issuance, publication and registration. When an opposition is filed, the applicant will be issued the certificate if the opposition is decided in his/her favour.