Significant amendments to Canada's Trademarks
Act (the "Act") have been passed, but are not
yet in effect. The legislative changes are rumored to come into
effect sometime in early 2018, which – if filed soon - may be
sufficient time to allow an application to proceed to
We believe there are several benefits to Canadian business
owners applying now:
1) Lower Application and Registration Fees
Applications under the new regime will require goods and
services to be divided into Nice classification categories. Canada
currently has a one-time filing fee of $250 and a one-time
registration fee of $200 - irrespective of the numbers of
international classes. It is unknown whether "per class"
fees will be introduced under the new legislation – but it
2) Longer Registration Term
Canada currently enjoys a 15 year renewable term- but the new
legislation reduces registration to a 10 year renewable term.
However, if an application proceeds to registration prior to the
coming into force of the new legislation, it is believed that the
Registry will honour the 15 year registration period. However, only
applications filed at least 12 – 18 months before the
amendments come into effect have any chance of still obtaining a 15
year registration term.
3) No Uncertainty from Applications Being Caught Midstream
in the Changeover
We expect that currently pending or about-to-be-filed
applications, that are even one day short of being advertised when
the amendments come into effect, may have to be amended, including
categorizing the goods and services claims into the Nice
classifications. (However, it is unclear how such amendments would
take place in the event that the application is already approved
for publication, but not yet advertised.)
4) Reduced Cost for Availability/Freedom to Operate
The requirement to claim and demonstrate "use" of the
trademark as a basis for registration, either in Canada or as part
of application/registration and use in the home country, is
eliminated under the new legislation. This may fill the register
with frivolous registrations, for which there is no helpful use
information. This would have the unfortunate effect of making
availability/freedom to operate searching in Canada more expensive
and less certain, as it may not be as easy to discover if a
potentially-conflicting mark was or is being used, without
significant marketplace investigation.
For these reasons, it is wise for business owners to file
trademark applications now. Even where your trademark is not
currently being used in Canada, filing a prospective (proposed)
application now would secure the benefit of an earlier
"placeholder" application date for a mark that you may
wish to use in the future.
If you wish to further discuss whether your business would
benefit from securing IP rights now, please contact us to
specifically discuss if trademark registration is right for your
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).