Canadian Trademark Law Changes: Standing Apart

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The Canadian Trademarks Act has undergone the most dramatic change in recent history. Canada had not been consistent with some of the international treaties governing trademark practice. The goal was to make Canadian trademarks practice more consistent with those practices in other countries. Changes include adopting a class system to group use descriptions, a class based fee structure, dropping use requirements from the application process, and new types of trademarks. Some of these changes will make things easier, some will make it more difficult and costly.

This is one of a series of posts about changes to trademarks coming on June 17, 2019. Our last post talked about new types of trademarks. Subscribe to our Top Ten in Tech Law newsletter to be sure to see them all.

Change #2: The need to prove distinctiveness

With the new non-traditional marks we mentioned last week (colours without delineated contours, 3 dimensional shapes, sound, scent, taste, texture) comes a requirement to provide evidence “… establishing that the trademark is distinctive at the filing date of the application…”. An examiner can also require proof of distinctiveness for any mark that they believe “… is not inherently distinctive.”

Distinctiveness basically means that the mark does a good job of distinguishing the applicant’s goods and services from those of others. For word marks, think of it as a continuum where at one end are clearly descriptive marks (which are not allowed), such as “cold ice cream” for ice cream. At the other end would be a unique, made up word. It helps to keep in mind that trademarks should be memorable, not descriptive. A trademark’s role is not to tell us what the product is.

What does it mean for you?

Filing evidence of distinctiveness basically requires proving that the marketplace is aware of that mark, and that it is associated in their minds with the particular product or service. Ideally the evidence will show that across Canada the mark is known by the public, and is backed up by things like sales figures, advertising, and other proof of awareness. Proving this will take substantially extra time and cost.

Because the examiner will also be able to require this proof for any kind of mark if they don’t feel it is distinctive, It may even mean that some marks that can be filed now will not be registrable under the new system. It will take some time to sort out what type and quantity of evidence will be required.

In our next blog we will talk about the Nice use classification system that Canada has adopted and how it will impact you.

If you're concerned that these changes might have an impact on your business, we recommend that you contact your trademark lawyer today or contact us for a no obligation consultation.


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