Major changes are coming to Canada's Trademarks Act effective June 17, 2019. Here is what you need to know:
- More Expensive
Filing a trademark application is about to become more expensive. In order to become more consistent with international trademark laws, Canada is adopting the Nice Classification system. Under this system, trademarks will soon be registered in Canada on a fee per class basis. This means the trademark application filing fee is rising – the cost for the first class will now be $330 CAD plus $100 CAD for each additional class, replacing the current filing fee of $250 CAD regardless of the number of classes.
Those considering filing an application should do so quickly to avoid these significant increases in costs.
- Elimination of Use Concept & Trademark Trolls
Those applying for trademark registration will no longer be required to identify the date on which they first used the trademark or state that they intend to use the trademark. Dropping this requirement will make it easier for trademark trolls to register your trademark with the intent to exploit you and your business. To get your trademark "back" will be costly as you may need to consider litigation, an opposition or an expungement.
Those considering filing an application should do so quickly to avoid the risk of a trademark troll owning your trademark and brands.
The registration term will be reduced from 15 to 10 years. Additionally, as Canada adopts the Nice Classification system the costs of renewing a trademark will also become more expensive. The registration renewal fee is rising – the cost for the first class will now be $400 CAD plus $125 CAD for each additional class, replacing the current renewal fee of $350 CAD regardless of the number of classes.
Those considering renewing a trademark registration should do so quickly to take advantage of the current registration term and avoid these significant increases in costs.
- Madrid Protocol
Canada is joining the Madrid Protocol, which will allow Canadian applicants to file trademark applications with the International Bureau of the World Intellectual Property Association (WIPO). This means you will be able to extend your Canadian application to other member countries of the Madrid Protocol through WIPO, potentially offering a simplified process and cost savings to Canadians considering filing trademarks in other countries where they do business.
Those considering filing for trademark protection in other countries should contact us.
- Watch Service
As the legislative amendments are expected to lead to an influx of Canadian trademark applications from applicants around the world, you may want to consider subscribing to a watch service in order to monitor new filings and identify potentially confusingly similar and infringing trademarks before they reach the registration stage, including those trademark applications filed by trademark trolls.
Those wishing more information on a watch service should contact us.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.