Why changes to trademark law matter and what you can do to prepare

Have you considered how upcoming changes to Canadian trademark rules will impact your business?

At CMA’s Future-Proof Your Brand, experts delved into what every brand manager, agency and brand lawyer need to know about the sweeping changes to Canada’s laws that will transform the trademarks landscape in Canada. Attendees learned why the changes matter and what you can do to prepare and protect your brand from trolls.

With the expanded definition of a trademark, you will be able to register and protect a broader, more valuable portfolio of trademarks, including 3D objects, holograms, tastes, scents and more. This larger portfolio of trademarks rights is valuable to a brand and is a shield to protect your business and will enable you to more fully articulate the elements of your brand.

Canada is also becoming a member of the Madrid Protocol, which means that Canadians can file applications internationally with the World Intellectual Property Organization (WIPO) in one language, with one payment mechanism, simplifying the application process. While this is not without some challenges, including potential increased costs, legal counsel can help your organization understand the impact and outline appropriate steps.

Further changes include the shortening of the renewal period for new registrations from 15 to 10 years and increased filing fees.

Ready to act? The panel had several recommendations including:

• Audit existing applications, registrations, and proposed trademarks currently in use and about to be used.
• Review your creative, promotional and brand development processes.
• Consider if the goods and services in your registrations are broad enough to protect your entire business. If not, apply to register.
• Ensure existing marks have been registered as trademarks in applicable countries, especially in Canada.

CMA members can download a comprehensive one-pager that outlines the legal changes at-a-glance and a list of actionable steps.

The regulatory landscape is constantly changing and staying up-to-date is important. If you are unsure of where to turn, the Canadian Marketing Association provides guidance and support to its members on a wide variety of issues. Check our site for resources and policy topics.