As originally reported in our June 2014 Charity Law Update, amendments to Canada’s Trademarks Act were passed into law on June 19, 2014 and introduced sweeping changes to trademark law in Canada. The Canadian Intellectual Property Office (“CIPO”) has confirmed that the amendments to the Trademarks Act will come into force in early 2019.
Amongst other changes discussed in greater detail in Charity Law Bulletin No. 360, the amendments eliminate the requirement to use a trademark in Canada before a registration can be obtained. This is notably the most significant change to trademark law since the 1950s. As a result, many in the sector are predicting this could result in trademark trolls registering existing common law trademarks as a way to extort payment out of unregistered brand owners. Further, filing fees will increase as Canada shifts to a new goods and services classification regime which will align Canada with other jurisdictions, such as the USA.
As a result of the imminent changes to the trademark regime, trademark owners have begun filing applications in advance of the changes coming into force. Since the amendments to the Trademarks Act were passed into law in 2014, the number of applications on CIPO’s Trademarks Database has increased significantly from 40,000 to 70,000 pending applications. Canadian charities and not-for-profits with existing unregistered trademarks should anticipate a continued influx of trademark applications, and will therefore want to consider taking steps to register trademarks in Canada before the amendments are implemented.