News & Views

Changes to the Trademarks Act are Coming June 17 - Five Things Businesses Should Know
April 25, 2019

Changes to the Trademarks Act are Coming June 17 - Five Things Businesses Should Know

Written by Pauline Bosman

The Canadian Trademarks Act has undergone substantial changes which take effect June 17, 2019. The changes are designed to streamline the registration process in Canada and to align Canadian trademark law with international laws and standards, and to implement the international trademark agreement known as Madrid Protocol so that businesses can file in multiple foreign jurisdictions through a single application filed in Canada.

1. USE REQUIREMENT: Trademark applications will no longer have to identify the date of first use of the trademark, or have to declare an alternate filing basis such as proposed use or reliance on a foreign registration. The number of trademark application filings is expected to increase as a result, including the number of trademark filings by trademark trolls (who have not used and do not intend to use the mark) seeking to charge others to license or purchase rights in the mark. If you have an unregistered trademark you are seeking to protect, or have a new trademark for products in development, consider filing trademark applications as soon as possible. Also, trademark owners should consider adding goods and services they may offer in future when filing an application to save future filing and prosecution costs, as there is no requirement to show use in respect of these goods and services prior to registration of an allowed trademark application.

2. EXPANDED DEFINITION OF TRADEMARK: Generally speaking, trademarks distinguish the goods or services manufactured or sold by a business from those of others. Under the changes to the Act, in addition to word marks, logos, and sounds, trademarks may now include smells, tastes, textures, holograms, moving images and colours. The trademark owner must show that the trademark is sufficiently distinctive or different from other marks to identify the trademark owner as the source of the goods or services.

3. FILING FEES ARE INCREASING: All goods and services are classified in one of 45 classes that make up the international Nice Classification system which has been adopted by Canada. As with most jurisdictions, Canada will be implementing per class filing fees, meaning that the cost of trademark applications which list goods in several classes will rise. Previously, there was one filing fee per application. If you are planning to apply for a trademark in multiple classes, file now to save filing fees. Note, however, that once a trademark has been allowed to proceed to registration, there will no longer be a final registration fee for new applications.

4. DIVIDING APPLICATIONS: Trademark applications may be divided into two or more applications, dividing the goods and services as listed on the initial application. Therefore, should there be an opposition to registering the trademark in association with some goods and services but not others, the trademark in association with the goods and services not in issue may proceed separately (to registration) while the opposition in respect of goods and services in issue proceeds separately.

5. TERM OF REGISTRATION REDUCED: The term of a trademark registration is being reduced from 15 years to 10 years. The reduction in the term will not affect current registrations until their next renewal date.

If you have any questions or wish to discuss registering a trademark in Canada or abroad, contact FIJ lawyers, Pauline Bosman at [email protected] or (905) 763-3770 x235 or Ryan Hanna at [email protected] or (905) 763-3770 x211.

*The material provided in this article is for general information purposes only. It is not intended to provide legal advice or opinions of any kind.

Pauline Bosman is an accomplished litigator who understands that litigation success depends on managing the process as much as on judging the merits of the case. In her client-centric approach, Pauline first takes the time to identify client needs and goals. She then devises a solution that makes sense—strategically, practically and financially.

Corporate Transparency
April 03, 2019

Corporate Transparency

Written by Craig Sandler and Vanessa Battista

Do you have “significant control” over your federal corporation? If the answer is “yes”, then the Federal Government wants to know about it.

In the interests of curbing money laundering and other criminal activities through the misuse of corporate vehicles, a change has been made to the Canada Business Corporations Act in the form of Bill C-86 Budget Implementation Act, 2018, No. 2. Bill C-86 requires private federal corporations to maintain a securities register of individuals with “significant control” over the corporation.

Note that Bill C-86 only applies to federal corporations, though it is expected that similar requirements will be imposed on private provincial corporations in the near future.

What does “significant control” mean?

Under the new requirements, “significant control” means ownership or control of 25% or more of the voting rights attaching to the issued shares of the corporation, or 25% or more of the corporation’s issued shares by value (fair market value).

The individual in question (which could be a sole individual or a group of individuals acting jointly or in concert) may exert significant control as either a registered or beneficial owner of shares, and either directly or indirectly. Therefore, in the situation of tiered corporate structures, it will be necessary to trace that control through the various tiers of holding companies to pinpoint the individual or individuals with ultimate significant control. In addition, an individual or individuals with direct or indirect influence over the shares that, if exercised, would result in control in fact of the corporation, would be held to exert significant control.

What information is required in the register?

The new securities register to be maintained must include the following information with respect to each individual exerting significant control:

  1. name, date of birth and latest known address;
  2. jurisdiction of residence for tax purposes;
  3. date on which the individual acquired significant control, and date on which the individual ceased to have significant control;
  4. description of how the individual has significant control over the corporation, including a description of the individual’s interests and rights in the shares of the corporation;
  5. description of the steps taken by the corporation to keep the register up to date each financial year.

The register should be updated each year, and if a change occurs during the year, within 15 days of such change.

It is important to note that penalties for non-compliance with these new register requirements are harsh – directors, officers and shareholders of the corporation may be subject to fines of up to $200,000 or possible imprisonment.

Bill C-86 comes into force on June 13, 2019.

If you are the holder of shares in a private federal corporation, please speak to us or to the corporation’s accountants for assistance with creating and maintain the new register.

For more information on the matter, please contact Craig Sandler directly at [email protected] or at 905 763 3770 x 214.

*The material provided in this article is for general information purposes only. It is not intended to provide legal advice or opinions of any kind.​

About the Authors:

Craig Sandler is a seasoned advisor to business in all areas of corporate and commercial law. Acting for large corporations, mid-sized firms and small start-ups alike, he offers informed, practical advice on asset sales and acquisitions, commercial agreements, leasing arrangements and everyday business issues.

Vanessa Battista is the 2018-2019 articling student at FIJ. Vanessa was our Summer Student in 2017 and she is excited to return to complete her Articling with the firm and gain experience in each area of expertise the firm has to offer.