On June 17, 2019, Canada’s trademark regime went through the most significant changes in over 50 years. Where have we landed, a year after the new provisions came into force?
One thing seems certain: Canada’s Trademark Examiners are loving the new “non-distinctive” objection. It has become the objection du jour, and sometimes appears to be applied in rather overreaching circumstances, with Google searches ruling the day. Practitioners have had to craft responses, without genuine guiding jurisprudence so far, in an effort to overcome the objection, and only time – and likely appeals to the Federal Court – will provide a better frame work for brand owners, and the professionals who guide them, to understand the proper scope of the objection.
Canadian business seem to have picked up the mantle of the Madrid Protocol, and are using the international filing system to protect their rights on a broader jurisdictional scale: one year in, over 500 Madrid applications have been filed originating from Canada. Despite some filing kinks to be worked out (one of those being that local time filing cut-off of 9PM PT/12AM ET is much further behind 12AM in Geneva), the system seems to be working well and streamlining the international filing process for Canadian businesses. Non-Canadians are also using the system to designate Canada – over 18,000 designations of Canada have been made to date – many appointing Canadian agents to receive mail on their behalf, as CIPO will only correspond with the applicant or a Canadian agent.
It is perhaps too early to tell, but the sky does not seem to have fallen – yet – from the lack of “use” information on the Register that marks it harder to determine priority rights, and lack of the “use” requirement to obtain a registration. We can, however, expect that to unfold in oppositions and section 45 cancellation proceedings in the years to come.
The uptick in trademark “squatting” filings that happened in the years leading up to implementation appears to have levelled off, presumably from the increase in fees per class that was effected with the changes: the infamous “Brandster”, who filed 400+ forty-five class applications in Canada under its name (with more under related companies) in the years leading up to last year’s implementation, has not filed any new applications since implementation in 2019, and almost all of its applications are abandoned or in default. A mere seven 45 class applications have been filed since June 17, 2019. Practitioners are also now using the “bad faith” ground of opposition, and with the potential to obtain costs sanctions, we will hopefully see positive decisions soon on that front that will dissuade such practices.
Nice classification seems to also be coming along relatively smoothly, with updates being made prior to renewal or upon notice from the Trademarks Office. Canada’s already strict requirements around descriptions of goods and services seems to be narrowing even further though, as Examiners now require additional specificity to allow the goods and services to be properly classified.
Businesses have also picked up on the availability of non-traditional trademarks, with over 500 applications having been filed in the non-traditional categories since June 17, 2019, covering each of: colour, three dimensional, positional, hologram, motion, sound, taste, scent, texture and mode of packaging goods. Colour was by far the most popular of the new categories. It will be interesting over the next few years to see how stringent CIPO is in assessing evidence of acquired distinctiveness of such trademarks, and just how far trademark owners will have to go to prove their case and what is “enough” to satisfy the Examiners. Applicants have already had some experience in trademarks that are primarily a geographic location or primarily merely a name or a surname, where, as of late, CIPO seems to have placed a very heavy burden on trademark owners to establish acquired distinctiveness .
Finally, an unintended consequence of the changes – which have increased the strain on CIPO resources – has been a significant increase in the time from filing to examination in Canada: no longer can an applicant expect to get a first Examiner’s Report or approval within 8-12 months; the wait has now increased to almost 2 years, and sometimes more. As existing registrations are slowly brought into compliance under Nice Classification, and Examiners get used to their new objections and examination procedures, it is hoped that the wait time will ultimately be considerably reduced.