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Canadian Trademark Law Changes: Are You Ready for the June 2019 Effective Date?

Key Changes in Registration, Nice Classification System, Application and Opposition Procedure

Recording of a 90-minute premium CLE webinar with Q&A

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Conducted on Tuesday, March 19, 2019

Recorded event now available

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This CLE course will provide guidance on the Canadian trademark rules and amendments, critical changes in registration, classification, applications, oppositions, and more. The panel will discuss the implications for U.S. IP owners and will guide counsel operating under the new system to protect IP rights.

Description

Late in 2018, Canada announced that its long-awaited trademark changes are effective June 17, 2019. These are the most significant changes to Canada's trademark law since 1954. U.S. IP owners need to understand the changes to the Canadian law to better protect their rights in Canada.

Among the changes when the new law goes into effect, goods and services will be classified according to the Nice Classification and applications will be subject to a per class fee structure. Also, the new law expands the definition of a trademark. Registration terms will be cut from 15 years to 10 years. However, registrations effective before the June 17 date will still enjoy the 15-year term.

With so many products crossing the border, U.S. companies and their counsel must be aware of the changes for U.S. companies and steps to take before and after the law goes into effect.

Listen as our authoritative panel examines the Canadian trademark rules and amendments, critical changes in registration, classification, applications, oppositions, and more. The panel will discuss the implications for U.S. IP owners and will guide counsel operating under the new system to protect IP rights.

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Outline

  1. Applications
    1. Use and revised basis of filing
    2. New administrative procedures
    3. Implications of adoption of Nice Classification (including cost)
  2. Examination
    1. Expanded coverage for nontraditional marks
    2. New examination for distinctiveness provisions
    3. Divisionals
  3. Allowance, term and renewal
    1. New allowance provisions
    2. Changes in registration term
    3. New renewal processes and procedures
  4. Letters of protest
  5. Opposition and Section 45 proceedings
    1. Process changes
    2. Registrar-initiated non-use proceedings
    3. New “bad faith” ground of opposition/expungement
  6. Madrid Protocol
    1. Processes and important differences
  7. Best practices
    1. Existing applications before advertisement
    2. Allowed applications
    3. New applications
    4. Renewals

Benefits

The panel will review these and other key issues:

  • The adoption of the Nice Classification system and the Madrid Protocol
  • Improved protection for nontraditional marks
  • Potentially more rigorous examination for certain types of marks
  • Enhanced customs, civil and criminal prohibitions against counterfeit products

Faculty

Ash, Stuart
Stuart C. Ash
Partner
Gowling WLG

Mr. Ash is a leading practitioner in the field of trademarks and intellectual property transactions. He has over 20...  |  Read More

Taubner, Reed
Reed W. Taubner
Partner
Gowling WLG

Mr. Taubner’s practice is centered on helping clients secure, enforce and commercialize their trademarks. He has...  |  Read More

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