A year on, Canada’s sweeping trademark law is driving delays – Managing IP

Donna White

Jun 19, 2020

Extensive amendments to Canada’s Trademark Act took effect on June 17, 2019, and the feedback a year later is mixed, according to a recent article in Managing IP by Rani Mehta. As part of the amendments, the requirement to declare use on applications was eliminated and examiners can now reject an application on the grounds that it lacks inherent distinctiveness. In addition, Canada joined the Madrid Protocol. Mehta reached out to a number of IP practitioners for their assessment of the impact of the changes, including Donna White, an IP lawyer and Managing Partner of Osler’s Ottawa office. One of the effects of the new legislation, Donna explains, is an increase in wait times for the trademark prosecution process – clients can now expect it to take about 24 months instead of the 15 to 17 months they waited before the amendments. She also comments on the implications of the new inherent distinctiveness rule, and says it has made it hard to provide definitive advice for clients on clearance and registrability.

In discussing the consequences of Canada’s decision to join the Madrid Protocol, Donna says that the firm has seen “an uptick in dispute work” – likely because Canada’s now on more companies’ and firms’ watch services.

“If we have an institutional client or a larger foreign firm that’s maintaining watches on clients’ portfolios, they’re now seeing hits on the Canadian side,” she says.  

If you have a subscription to Managing IP  and would like to learn more about the practical pros and cons of the amendments to the Trademark Act, read Rani Mehta’s full article, “A year on, Canada’s sweeping trademark law is driving delays” from June 19, 2020.