Canada’s new trade-mark laws, and what it means for your restaurant

By Chad Finkelstein

Brand owners out there – get ready, big changes may be coming to Canada’s trade-marks laws, and some of them aren’t pretty. Some of them are really good developments, as well, that will put us in step with international intellectual property law norms, but all of them are going to dramatically alter the way we view trade-mark protection in this country from now on.

If you are a restaurant owner, you need to understand not only how your (old) trade-marks are protected and rights to them enforced, but also how your (new) trade-marks will be applied for and registered in the future. After all, these marks are your notice to the world that you are doing business under them and that they are not available for use in connection with similar products and services. This is especially true if you are a franchisor, or have plans to become a franchisor, since you are also a licensor of your brand and need to ensure it’s as protected as possible.

These changes are coming by way of a federal government bill to make major amendments to Canada’s Trade-marks Act to prepare Canada for a likely ratification of a number of international intellectual property treaties, which itself was largely a step towards preparing for a Canada-European Union free trade agreement. While some of the changes are superficial and overdue (e.g. replacing the spelling of “trade-mark” with the more universal “trademark”; replacing the antiquated term “wares” with “goods”), there are some more substantive changes to be aware of.

For one, currently, trade-mark owners in Canada need to make separate applications for their marks here and any other country where they are seeking trade-mark protection. Under the new regime, Canada would keep up with international filing norms and permit applicants to file in numerous international jurisdictions at the same time. Also, the current trade-mark registration term of 15 years is going to be reduced to 10. This may weed out trade-marks that have fallen out of use, but is also an acceleration of the payment of government renewal fees by five years.

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