Client Alert: Major Changes in Canadian Trademark Law
Beginning on June 17, 2019, Canada’s system of trademark protection is set to undergo a number of major changes. These changes will have a significant impact on the Canadian trademarks system as we know it. If your business currently owns a registered Canadian trademark, or is planning to register one soon, it is vital to learn the effect of these changes.
The revised Canadian trademark law seeks to align Canada’s trademark practice with that of Canada's major international trading partners including the United States and the European Union. Adoption of the standardized international procedures will also make it easier for international companies to seek protections for their businesses and trademarks in Canada.
June 17, 2019 is just around the corner so it is important to familiarize yourself with these changes now and assess how they will impact the trademarks you use in your business. Before June 13, complete the following:
- File new applications. This applies particularly to multi-class applications. The Canadian Trademark Office’s (CTO) filing fee is $250 now compared to $330 on or after June 17 (plus $100 for each additional Class).
- Renew registrations. Renew now regardless of when due in the future. The Canadian Intellectual Property Office (CIPO) renewal fee is $350 now as compared to $400 on or after June 17 (plus $125 for each additional Class).
- File immediately to protect key brands in Canada. Trolls are already active as there will be no use requirement in pending and new applications in Canada as of June 17.
Pending Canadian Applications
- If allowed and use is verifiable, consider filing a declaration of use and pay the registration fee before June 13, 2019 (get a 15-year term – the CIPO has advised that it is possible last minute filings will not be processed in advance of June 17, 2019, and thus may not receive a 15-year term).
- If allowed but no use or use is tenuous, wait until after June 17, 2019, and simply pay the registration fee (no Declaration of Use is needed; 10-year term). In some cases, it may make sense to delay registration as long as possible in order to also delay the mark’s vulnerability to cancellation for non-use, which occurs after three years from the date of registration.
- Consider watch services for key brands in Canada.
- Voluntarily classify now to avoid the CTO’s requirement to do so.
- Madrid Protocol — Canada will be available for designation in International Applications and Subsequent Designations in existing registrations as of June 17, 2019.
We Can Help
If you would like to discuss options for filing your trademark applications or renewing existing registrations before the upcoming changes take effect, please do not hesitate to contact us to discuss.
- David H. Bluestone
- Sharon E. Calhoun
- Karyn L. Doerfler
- Daniel L. Dominguez
- Thomas M. Gniot
- Andrew R. Grossmann
- Jessica Heckinger Nowak
- Abigail J.M. Hoverman
- Kaitlyn E. Kelly
- Alexander Lourie
- David B. Lurie
- Emi Maia Nam
- Andrew E. Nieland
- Megan Ratia
- Robert E. Shapiro
- Scott J. Slavick
- Wendi E. Sloane
- James R. Vogler