Nov 2018 Charity & NFP Law Update
After much anticipation and uncertainty, changes to Canada’s trademark law have been set to take effect on June 17, 2019. The coming into force of the new law will result in significant changes to Canadian trademark law of which charities and not-for-profits will need to be well aware. Some of the main changes to trademark law have been discussed in Charity Law Bulletin No. 360, and are further outlined below, together with some recommendations that charities and not-for-profits will want to consider prior to the coming into force date.
The key changes that will impact charities and not-for-profits are the following:
- Trademark applicants will no longer be required to indicate if the trademark has been used in Canada and, if so, the date of first use.
- The requirement that a trademark be in use before it proceeds to registration will be eliminated.
- The definition of “trademark” will be greatly expanded to include non-traditional trademarks, including colours, holograms, moving images, sounds, scents, tastes, and textures.
- Canada will become a member of the Madrid Protocol that will allow applicants and registrants to obtain international registration of trademarks in any of the 102 member countries through a streamlined process without the need to file national applications in each country.
- The Nice Classification of goods and services will be adopted and, as a result, applicants will be required to classify goods and services in accordance with the classification system.
- A class-based government fee system will be introduced for filing and for renewal.
- Trademarks will be examined for distinctiveness which will make it harder to register trademarks.
- The term of registration will be reduced from 15 years to 10 years.
Charites and not-for-profits should consider the following prior to the implementation of the new law on June 17, 2019:
- Proactively file trademark applications before the class-based government fee system is implemented which will result in an increase in government fees.
- Renew registrations prior to June 17, 2019 to take advantage of the 15 year renewal period and to save on fees, as it will be much more expensive to renew registrations after the new law is in force.
- Consider expanding goods and services in existing registrations before the increase of government filing fees.
- Beware of trolls. Until now, trademark trolls in Canada were not really an issue. However, because it will now be possible to obtain registration of a trademark without use, trademark trolls in Canada have already arrived. The Canadian Intellectual Property Office has reported that over 500 trademark applications have been filed covering all 45 classes of goods and services and nearly 100% of those applications were filed by trolls, likely with the intent to extort money from legitimate trademark owners that have not filed applications. This will likely continue and become an even more prevalent problem as we approach the implementation date. As a result, charities and not-for-profits must be proactive in filing for new trademark registrations and expanding existing registrations now in order to avoid falling victim to trademark trolls.
- Given the increase of trademark trolls and the expected increase in Canadian trademark filings from applicants around the world, it will be even more important to monitor trademark filings through trademark watching services in order to enforce trademark rights.