Canada’s New Draft Trademark and Industrial Design Regulations
June 19, 2017

by: Philip Lapin and Christine Genge

As previously reported, Canada’s trademark law will be significantly overhauled. The most recent forecast from the Canadian Intellectual Property Office (CIPO) suggests that the new law will come into force by early 2019. Canada’s Industrial Design law is similarly undergoing modernization, with the new law also expected to come into force by early 2019.

Canadian laws are typically enacted through two types of legislation, namely (a) an Act, which details the substance of the law and (b) the Regulations, which provide details relating to procedure, time frames, etc.

The new Trademarks Act and the new Industrial Design Act have been finalized. The new Trademarks Act was described in our previous IP Update on March 31, 2014 and the new Industrial Design Act was described in our IP Update on October 28, 2014.

However, the Trademark Regulations and the Industrial Design Regulations have not yet been finalized. CIPO only just today released the first draft of the new Regulations as set out at the following link. As summarized in our past articles, among the most significant changes enacted by the new Trademarks Act are those which will enable Canada to adhere to and become a member of the Madrid Protocol and the Nice Agreement. The Madrid Protocol simplifies the procedure for filing corresponding trademark applications in foreign countries, once a trademark applicant has a home country trademark application or registration. The Nice Classification provides a (mostly) standardized means to classify goods and services. Similarly, the amendments to the Industrial Design Act are to enable the implementation of the Hague Agreement which provides a mechanism for registering an industrial design in several countries by means of a single application, filed in one language, with one set of fees. The draft Regulations provide considerable detail outlining how Canada will adhere to these international agreements. 

Trademark Regulations

Given the extent of changes set out in the draft Regulations  and given that many of the changes relate to technical issues and minutia, not all of the changes are outlined in this article. However, a few highlights are worth mentioning. The draft Regulations:

  • permit third party correspondence during prosecution (currently prohibited) arguing that the mark should not be registered; 
  • eliminate the $200 CAD registration fee;
  • specify fees per class, unlike current law in Canada which does not;   Examples include:
    • trademark application filing fee will be:
      • $330 CAD for the first class plus $100 CAD for each additional class;
      • instead of the current $250 CAD filing fee regardless of the number of classes;
    • registration renewal fee will be:
      • $400 CAD for the first class plus $125 CAD for each additional class;
      • instead of the current fee of $350 CAD regardless of the number of classes;
  • codify the ability to correct the name of an applicant in a trademark application;
  • describe the procedure for dividing and merging applications and registrations;
  • set out changes for trademark opposition practice, including:
    • the timing relating to cross-examinations;
    • the filing of written arguments in sequence (instead of in parallel under the current system);
    • the permitted extensions of time, which will be slightly different for applications filed through the Madrid Protocol.

Industrial Design Regulations

Although perhaps less extensive than the amendments to the Trademark Regulations, the new Industrial Design Regulations provide some significant changes of note.  For example, the draft Regulations:

  • provide a formal acknowledgement of third party correspondence during prosecution which protests that the design should not be registered;
  • relax the illustration requirements by allowing any combination of photographs, graphic reproductions or other specified visual reproductions; 
  • further relax the illustration requirements by requiring only a single illustration that shows the design in isolation, allowing multiple illustrations to contain environment, where presently only one illustration containing environment is permitted;
  • make optional the inclusion of a description of the design, where presently it is mandatory;
  • allow the filing of a divisional application for any design disclosed in a parent application, but further limit the timeframe for filing a divisional application;
  • provide for publication of the design on the earlier of registration of the design or 30 months from the earliest priority date, where publication presently takes place only upon registration;
  • sets out rules of general application as well as rules applicable only to the processing of applications filed under the Hague Agreement.

Consultation Process

CIPO is accepting comments concerning the draft Industrial Design Regulations until July 14, 2017 and to the draft Trademark Regulations until July 21, 2017. Comments may be sent by email to the following email address: ic.cipo-consultations-opic.ic@canada.ca, indicating in the subject line the Regulations to which the submission applies (i.e. Trademarks or Industrial Designs).

After reviewing the comments, CIPO will consider revisions. Before the Regulations can be finalized, they must proceed through a formal publication process in the Canada Gazette.  CIPO plans to initiate the formal Gazette process in the fall of 2017. However, as noted above, the new Trademarks Act and the new Industrial Design Act, and their respective Regulations, are not expected to come into force before early 2019.

We will provide further updates prior the implementation of the new trademark and industrial design law in Canada.

For further information, please contact any member of our Industrial Designs or Trademarks Groups.

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 our offices directly.

 

 

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