Impact of Trade-marks Act amendments on food and agribusiness companies

Canadian food and agribusiness companies will have an easier time getting their brands to market and taking them global starting on June 17, 2019, as the new amendments to Canada’s Trade-marks Act will finally come into force.

Ushering in a series of changes for Canadian brand owners, the impact of these amendments will be especially felt by Canadian companies in the food sector where branding is key.

National Impact

The new amendments will 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 Agreement currently adopted in Europe and the United States. Canadian companies will no longer have to provide a commercial sale of their product or advertisement of a food 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 have greater flexibility to pivot to or from a brand depending on market acceptance. In the competitive world of food and beverage marketing, this flexibility should provide some additional benefits when launching a brand in Canada.

Canadian brand owners should be aware there will be increased costs both for filing and renewing a trademark as they will be charged according to how many classes their goods and services fall into. The renewal timeline for a trademark has also dropped from 15 to 10 years, as Canada has opted to implement the Singapore Treaty.  

Global Impact

Canadian food and agribusiness 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 up to 120 countries while utilizing a foundational Canadian application or registration. Brand owners will be able to launch products 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. 

Companies should see an immediate benefit to their bottom lines, as the costs for filing in foreign jurisdictions will be limited to the government filing fee. The Madrid Protocol has a straightforward process for subsequent filings in additional jurisdictions as a business grows globally. Brand owners are therefore controlling the expansion of the brand through an efficient process and with increased certainty. Securing a global brand for a Canadian product or food 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 food and agribusiness sector, owners should take advantage of low government fees and renew their marks before June 17 when fees will increase and file for new Canadian marks if the goods and services for their brands fall into multiple classes.