As reported previously in our Alerts of
April 1 and
June 20, 2014, substantial changes are coming to the Canadian
trademarks regime, designed to bring Canada's trademark system
in line with its global treaty obligations.
A hot topic of discussion among trademark practitioners,
trademark owners and the Canadian Intellectual Property Office
(CIPO) is that of how CIPO is handling the early renewal of
trademark registrations. Currently, registrations may be renewed
for fifteen years; however, under the new regime, registrations
will be renewed for only ten years.
In the circumstances, a number of trademark owners may be
tempted to pursue early renewal, so as to secure a fifteen year
renewal term before the new legislation is brought into force.
However, we recommend avoiding any rush to renew early at this
time, as it appears that CIPO's current position is that the
applicable term of renewal is determined by the version of the
Trademarks Act which is in force as of the actual date
of renewal (i.e., the date when the previous term actually
expires), not the date on which the renewal request is made.
In other words, it may not be possible to secure a fifteen year
term of renewal if the new Trademarks Act comes into force before
expiry of the existing term. CIPO has recently suggested that even
where it issues a certificate of renewal with a fifteen year term
– which it is apparently currently doing – the
renewal term set out in a certificate may not be honoured, and
the operation of law (i.e. ten years from the expiration date) will
govern the actual term of renewal.
We also understand that there have been discussions about
possibly reducing the required renewal fees, to reflect the shorter
renewal term available. Hence, anyone paying for early renewal, but
whose registration is ultimately only entitled to a ten year
renewal term, may be paying more now than if they wait for their
renewal deadline. We do not know if CIPO intends to refund
overpayment of any such renewal fees.
On the other hand, we recognize that there is a possibility that
CIPO will introduce per class renewal fees, which could increase
the total cost of renewing registrations for multiple class
registrations after the new Act comes into force. If that
is indeed the case, then early renewal may make sense for
Given the current uncertainty surrounding the renewal of
trademark registrations, and the possibility of paying for a
fifteen year renewal (possibly at a higher rate) and receiving only
ten years, it does not appear appropriate at this stage to rush to
file early requests for renewal. We will be providing further
updates as soon as we receive additional information from CIPO.
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.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).