A Modernized Trademark Regime for Canada – by James Palmer

James Palmer has prepared a discussion paper on how upcoming changes to the Trademarks Act may impact dealings with the Canadian Intellectual Property Office (CIPO), titled A Modernized Trademark Regime for Canada. The following is brief excerpt from the introduction:

In 1954 Canada brought into force the current Trademarks Act that broke with many of Canada’s longstanding traditions concerning the registration of trademarks. One of the more controversial changes was the acceptance of applications based on proposed use!  After more than 60 years of loyal service to Canadians the venerable ‘54 Act is about to be retired and replaced with an Act that will again shake up the trademark community.

After years of extensive consultations with industry, trademark owners and trademark practitioners, a new Trademarks Act was adopted in 2014 thereby completing the first stage of modernizing the Canadian trademark system.

Stage two of this process was completed earlier this year with the release of a draft of a new Trademarks Regulations. The goal is to complete final revisions this summer and have a final version ready for adoption in the fall of 2018.

The final stage of this transition will be an upgrade of the Trademarks Office IT system which is required to handle the very significant changes that the modernized trademark system will introduce. CIPO has recently made it known that the new Act and Regulations are to be implemented in early 2019 however, the specific date will remain a mystery until CIPO completes the update of the IT System.

In addition to the implementation of a new Trademarks Act and Regulations, Canada will implement the Madrid Protocol, adopt the NICE Classification System and adhere to the Singapore Treaty.

The full paper is available here.