Among the many changes to Canadian trademark law that will
result from Bill C-31 is a change to the renewal period for
trademark registrations. While Bill C-31 has received Royal Assent
and is thus now law, the Canadian Trademarks Office has indicated
that the amendments to the Trademarks Act
("Act") will not actually come into force until
late 2015 or early 2016. This intervening period will provide time
for the Trademarks Office to oversee the necessary amendments to
the Trademarks Regulations and to make changes to its
information technology systems. The precise date on which the
amendments to the Act will come into force is therefore
not yet known. As discussed below, this could lead to some
uncertainty regarding renewal terms for trademark registrations
during the transition period to the new legislation.
Under the provisions of the Act currently in force,
Section 46 provides that registrations are subject to renewal
within a term of 15 years from the day of the registration or last
renewal. Under current practice, it is possible to renew
registrations as far in advance of the renewal deadline as the
applicant chooses. In addition, there is a 6 month grace period
after the renewal deadline during which renewal can also be
Pursuant to Bill C-31, Section 46 will be amended to provide for
a 10 year renewal term. In addition, registrants will only be able
to renew the registration within a prescribed 12 month period,
namely 6 months prior to the renewal deadline and 6 months after
the renewal deadline. Consequently, renewing a registration more
than 6 months in advance will no longer be permitted once the
amendments to the Act come into force.
Trademark owners should be particularly aware of the Trademark
Office's policy which will govern renewal during the period
before the amendments to the Act come into force. In
particular, the Trademarks Office has indicated that for those
registrations with a renewal deadline that falls on a date before
the amendments come into force, the Trademarks Office will continue
to grant renewals with a term of 15 years. For those registrations
with a renewal deadline that falls on a date after the amendments
to the Act come into force, the Trademarks Office will
grant renewals for a term of 10 years.
Notably, since the coming into force date is not currently
known, the above Trademarks Office policy raises the possibility of
uncertainty with respect to renewal terms in certain circumstances.
For example, a registrant could renew a registration under the
current practice well in advance of the deadline and obtain a
renewal certificate that indicates a renewal term of 15 years.
However, if the amendments to the Act happen to come into
force before the date of the registration's original renewal
deadline, then the renewal would only be valid for 10 years,
despite the registrant being in possession of a renewal certificate
indicating 15 years.
Once the precise coming into force date has been published by
the Trademarks Office, it will be possible to identify with
certainty the duration of the renewal period in all instances. We
will report on the coming into force date in a subsequent IP Update
when the date is provided by the Trademarks Office. In the
interim, Canadian trademark owners and their agents will want to
exercise caution when considering the renewal of registrations well
in advance of the renewal deadline, at least for those
registrations with renewal deadlines in the late 2015 to early 2016
timeframe, to ensure that they are monitoring and docketing the
correct renewal period once the amendments to the Act come
The preceding is intended as a timely update on Canadian
intellectual property and technology law. The content is
informational only and does not constitute legal or professional
advice. To obtain such advice, please communicate with our offices
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).