Sterne, Kessler, Goldstein & Fox P.L.L.C. (JD Supra Canada)

The wait is over! The Canadian Privy Council Office recently announced that the long-anticipated changes to Canada’s trademark laws will officially go into effect June 17, 2019.

The Hague Agreement, the international registration system for industrial designs, continues to grow as Canada will become its newest member on November 5, 2018. As we reported back in January, Russia also joined the Hague this year.

Those of us with clients who do business in Canada have been watching with interest as Canada prepares to implement significant changes to its trademark laws. The new Trademarks Act (no more Trade-hyphen- marks!) was enacted in 2014, it has been inching toward implementation ever since. The Trademarks Office forecasts that the new regulations will be in force by early 2019.

Canada has amended its Trademark Law, and although the amended Law's effective date is not yet known, brand owners can expect three significant changes to Canadian trademark law practice. First, to U.S. brand owners and practitioners perhaps the most obvious change is to Canada's unusual "trade-mark," "trade-name," and "wares" terminology – which will be changed to the more familiar terms,

Many U.S. brand owners already work with U.S. Customs and Border Protection (CBP), a division of the U.S. Department of Homeland Security, to keep counterfeit products out of the U.S. CBP examines cargo at more than 300 ports of entry into the U.S., and seizes goods that appear to infringe registered trademarks and copyrights on record with CBP.

Not to be upstaged by China, who recently proposed changes to its Trademark Law, the Government of Canada proposed substantial changes to its Trade-marks Act on March 28, 2014. Several of these changes were proposed to align Canada's trademark system with those of other countries, and to allow Canada to accede to certain international treaties with trademark provisions, such as the Madrid...