Impact of Trade-marks Act amendments on technology and innovation companies

Technology-driven Canadian companies are at the cutting edge of global innovation and with the new Canadian trademark laws finally taking effect on June 17, 2019, it will be easier for these companies to get their brands into the Canadian market and, more importantly, take them global.

The new amendments to Canada’s Trade-marks Act will thereby usher in a series of changes that should have a positive impact on one of Canada’s most important sectors. 

National Impact

The new amendments provide for easier and consistent classification of the goods and services associated with a trademark. Canada will now follow the international classification system under the Nice Treaty currently adopted in Europe and the United States.  

Canadian technology companies will no longer have to provide a commercial sale of their product or advertisement of a software service prior to getting their trademark formally registered.  The new rules will allow for immediate registration of a trademark once it has completed the advertisement period.  

Brand owners will be able to test a brand with the consumer more quickly without having to commit to sales and will enjoy greater flexibility to pivot to or from a brand depending on market acceptance. While most changes are for the better, Canadian national trademarks will cost the applicant/owner more, with additional fees for multiple classes, both on filing and on renewal.

Global Impact

Canadian technology and innovation companies will finally be able to take advantage of the Madrid Protocol. This international trademark filing mechanism allows for the centralized filing of a brand in 120 countries while utilizing a foundational Canadian application or registration.  

Brand owners will be able to launch their services globally  more cost-effectively , as the Madrid Protocol provides for a single filing, negating the need for engaging foreign trademark counsel unless the application is refused at the local trademark office.  

Securing a global brand for a Canadian technology innovation or service will become much more attainable and cost-effective starting June 17, 2019.

Time to Review and Renew

Brand owners should be reviewing their trademark portfolios relative to their business goals and determining if there are any jurisdictional gaps. Global clearance searches can confirm availability of adoption and Canadian trademark registrations or pending applications could be used for filing a Madrid Protocol application to capture those missing jurisdictions.  

For those tried and true brands with a strong Canadian presence in the technology and innovation sector, owners should take advantage of low government fees and renew their marks before the fee increase and file for new Canadian marks if the goods and services for their brands fall into multiple classes.