Trademark changes will happen June 17, 2019
November 28, 2018
We finally have a date: June 17, 2019.
That is the date on which a huge number of changes to Canadian trademark law will finally take effect.
Ever since the changes were first introduced in legislation in 2014, we have been talking with clients about the nature of the changes and what they will mean, but without knowing when they would actually come into force. This was because the regulations were a long-standing work-in-progress while the Trademarks Office wrestled with modernizing their systems to enable them to implement the changes, particularly the filing of international Madrid Protocol trademark applications. With the publication of the final regulations on November 14, 2018, we now have a much clearer picture and timeline. Here are some of the key things trademark applicants should be aware of:
- Filing grounds eliminated
- You will no longer need to specify whether the mark has been used in Canada in association with the goods and services and, if so, the date(s) of first use. The different filing grounds (use, proposed use, use-and-registration abroad) will be eliminated.
- No Declarations of Use required
- If you have a pending application that is based on proposed use in Canada, after June 17, 2019, the requirement to file a Declaration of Use will disappear. If you have a pending application that has been allowed, and you do not have use yet, look at extending the deadline for filing the Declaration in order to gain registration without actual use in Canada.
- Class fees for filing
- As applicants will have noticed over the past few years, Canada has been “voluntarily” using the Nice classification system for goods and services. After June 17, 2019, that becomes mandatory and per-class fees will start to apply. For filing a new application, instead of one $250 fee for all goods and services, the cost will increase to $330 for the first class and $100 for each additional class. On the other hand, the $200 registration fee has been eliminated. Accordingly, if you are considering a Canadian trademark filing you may wish to consider filing before June 17, 2019 if you are including multiple classes.
- Class fees for renewal
- The renewal term will be shortened to ten years for any registration for which the renewal date falls after June 17, 2019. After that date, renewals will require that all goods and services be properly classified and the renewal fee will increase from $350 for all goods/services to $400 for the first class and $125 for each additional class. Moreover, registrants will now be restricted to renewing marks no more than six months in advance of the renewal deadline. To save money, consider renewing registrations prior to June 17, 2019.
There are many other changes, including extensive changes to opposition practice and the introduction of Madrid Protocol filings, that will create a number of new challenges and opportunities for trademark holders in Canada.
Information in this article is for information only. It is not, and should not be taken as, legal advice. If you have any questions relating to industrial designs or any other intellectual property related matter, please contact our office and a Rowand LLP professional will be pleased to assist you.