Communication Breakdown: Canadian Quirks to Madrid Trademark Filing System that Foreign Applicants and their Counsel need to know

Canada joining the Madrid international trademark filing system earlier this year came as welcome news to much of the international trademark community. Hidden in that euphoria however, are a couple of Canadian quirks that are likely to trip up unwary applicants and their foreign trademark Counsel.

This Knowledge Bytes article, reviews the limited Canadian Intellectual Property Office (CIPO) communications that will be sent to the World Intellectual Property Office (WIPO) and to foreign representatives of applicants who designate Canada in their applications for international registration. The bottom line is that a resident Canadian trademark agent should be appointed for all such applications, so that important communications from CIPO not go astray or languish, unattended, for an undue period of time.

Canadian Trademark eFiling Systems Outage from June 13 to 17, 2019 – What you need to be aware of

The Canadian Intellectual Property Office will be taking its efiling systems for trademarks down from Thursday, June 13, 2019, at 00:00 EDT to Monday, June 17, 2019, at 06:00 EDT, for system upgrades and enhancements.

How does this affect Applicants and owners of  trademark Registrations in Canada?  Among other things, this outage will affect:
• e-Filing of new Trademark Applications;
• Registration of pending Applications; and
• Renewal of existing Registrations

Long awaited and significant changes to Canadian Trademark law – many of which have been previously discussed in this Blog – don’t come into force until June 17, 2019 (the CIF Date).  However, with the above systems outage, anyone hoping to file a new application or to renew an existing registration – with the intent of doing so under the current, lower pricing that is not tied to the number of Nice classes of goods/services covered – will need to do so prior to midnight (EDT) on June 12, 2019.  The same time limit applies to anyone hoping to finalize registration of an allowed application with the intent of obtaining a 15 year term, rather than the 10 year term available for registrations that issue after the CIF Date.

Please contact the author for more information or advice on the above.

No Going Back – Canada Formally Accedes to Singapore, Madrid and Nice Treaties

The Canadian Intellectual Property Office (CIPO) has announced that as of March 17, 2019, Canada has formally acceded to the Singapore Treaty, the Madrid Protocol and the Nice Agreement.  All three of these treaties will come into force in Canada on June 17, 2019.

According to CIPO “As of that date, trademark owners in Canada will be able to apply for trademark protection in more than 100 jurisdictions through a single application, in one language, with one set of fees and in one currency.”

June 17, 2019 will also be the coming into force date for numerous other significant changes to Canadian trademark practice.  Please see our recent post which explains some of the most important changes.  These are exciting times for trademark owners and their legal Counsel in Canada!

Royal Assent Received for Most Recent Amendments to Canada’s IP Legislation

Bill C-86, the Budget Implementation Act, 2018 (the “Act”), received Royal Assent on December 13, 2018, after moving through Parliament at a blistering pace. In all, less than two months elapsed between the tabling of the bill and its passage.

These amendments will affect the Trade-marks Act, the Patent Act and the Copyright Act.  In addition, a new regulatory body for Canadian Patent and Trade-mark Agents will be created pursuant to the College of Patent and Trade-mark Agents Act. 

The most significant amendments to Trade-marks Act are as follows:

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Delays Nourish Desires: Canada’s New Trademark Laws Come Into Force June 17, 2019

Earlier today, the Canadian Intellectual Property Office announced that long-anticipated amendments to Canada’s trademark laws will come into force on June 17, 2019.  It also published a new set of Trademarks Regulations, which will support those amendments.

First introduced in June of 2014, the amendments contain the most significant changes to Canada’s trademark law in decades, (discussed in earlier posts) including:

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Parliament Tables Proposed Amendments to the Trade-marks Act

On October 29, 2018, the Canadian Parliament tabled, in a surprise to many practitioners, the Budget Implementation Act 2 (Bill C-86), which would amend, among other things, the Patent Act, Trade-marks Act, and Copyright Act. In addition, the bill contains provisions enacting the College of Patent and Trade-mark Agents Act .

Proposed amendments to the Trade-marks Act include adding bad faith as a ground of opposition and expungement; requiring use as a precondition of alleging infringement in some circumstances; adding some restrictions to the term of official marks; giving the Registrar additional powers to govern the process of opposition proceedings; and requiring leave to file additional evidence with the Federal Court on appeal from a decision of the Registrar.

David Bowden

Canadian Trademarks Law: 2017 in Review

Our very own Scott Lamb’s annual take on major developments in the world of Canadian trademark law has been recently published in the authoritative Annual Review of Law & Practice. A copy of Scott’s insightful update can be found online here. Notably, one of the biggest highlights from 2017 were the publication of draft regulations in relation to the long awaited coming into force of significant amendments to the Canadian Trademarks Act. These were passed back in 2014 and it is now anticipated that these will come into force in 2019 (maybe).