Canada: Countdown To Canada's New Trademark Laws: Make Sure You Take Advantage Of Cost Savings While You Can

Last Updated: February 28 2019
Article by Cynthia Rowden and Meghan Dillon

Canada's long-awaited amendments to the Trademarks Act are now confirmed for June 17, 2019. Trademark owners still have several months to prepare for the changes, which, as we have written about before, will impact many trademark steps from searching and filing to registration and enforcement. Key changes include elimination of use as a registration requirement, implementation of the Nice Classification system and related fees-per-class for both filing and renewal, and shortened renewal terms. Transition rules, some of which are very complex, will also impact costs and procedure.

There are a few steps all brand owners should consider NOW that may permit cost-savings and broader rights:

  1. FILE NOW TO AVOID HIGHER FEES FOR MULTI-CLASS APPLICATIONS

    The combination of mandatory Nice Classification of goods and services and new filing fees will increase the cost of registration for entities seeking protection in multiple classes. Currently, total government fees are $450 CAD – namely a single filing fee of $250 CAD for applications filed online regardless of the number of goods and services, plus a registration fee of $200 CAD payable following allowance. As of June 17th, filing fees will increase to $330 CAD for the first class, plus $100 CAD for each additional class. By way of example, total government fees for a mark covering foods, beverages, and clothing and entertainment services will increase from $450 CAD (filing + registration fees) to at least $630 CAD, depending on how those goods and services are classified. While separate registration fees will not apply to any application filed on or after June 17th, total government fees for a 4-class application will increase by at least 50%. If brand owners are considering filing in Canada, they should do so before June 17th to avoid these increases.
  2. RENEW NOW TO AVOID HIGHER FEES FOR ALL REGISTRATIONS

    Currently, Trademarks Office practice offers opportunities for cost-savings on renewal that will disappear on June 17th.

    As of June 17th, government renewal fees will increase from the current $300 CAD per registration, regardless of the number of goods/services/classes, to $450 CAD for the first class of goods/services and $125 CAD for each additional class. As above, that will impact multi-class registrations significantly. Using a 4-class registration as an example, government fees will increase from $300 CAD to $825 CAD. In addition, renewal terms will shorten from 15 to 10 years for all registrations due for renewal on or after June 17th.

    Under current Trademarks Office practice, there is no limit on how early a renewal request may be processed. While most businesses arrange for renewals within a year of the renewal deadline, it is possible to renew two, three or more years in advance. Under the new amendments, renewal will only be possible 6 months in advance of the deadline. While it may not be possible to predict, now, if marks will still be of interest a year or more from now, for major marks due for renewal in the next several years, there can be considerable cost savings to renewing now. For that reason, check upcoming renewals, not just in 2019, but in 2020 or even 2021, and consider renewing before June 17th to take advantage of these cost savings.
  3. DECLARATIONS OF USE – FILE NOW, OR WAIT?

    Since "use" as a registration requirement will disappear as of June 17th, applicants with allowed applications that require the filing of a declaration of use in Canada might want to keep those applications pending, especially if the mark is now used only on a small sub set of the filed goods/services. As of June 17th, those pending applications will no longer require a declaration of use, and may be registered for the full list of filed goods/services upon payment of the current government registration fee ($200 CAD).

    On the other hand, since any registration that issues after June 17th will have a 10 (vs. 15) year term, applicants who are in a position to complete their registration requirements before June 17th should do so to get the benefit of the longer registration term. For example, applicants who must file a declaration of use and have already used the mark, or have used for most of the filed goods and services and are unlikely to use on the others, or have another acceptable filing ground such as registration and use abroad, might want to complete the registration process now. Practically, getting protection for a broad list of goods/services may outweigh getting a longer term, but for applications with completed filing grounds and/or use on the key goods/services, taking steps before June 17th may be advisable.
  4. PREPARE STANDING INSTRUCTIONS TO PAY REGISTRATION FEES

    Owners of allowed applications, and those with many pending applications should consider providing instructions now to pay the registration fee on June 17th, to obtain registration as soon as possible under the new "no use" regime.
  5. CANADIAN APPLICANTS CAN INITIATE INTERNATIONAL BRAND PROTECTION UNDER THE MADRID PROTOCOL

    Starting on June 17th, Canadian companies will be able to request that their trademark rights be extended to other countries under an international filing system called the Madrid Protocol, designed to bring cost-savings for international brand protection especially relating to foreign filing fees. Requests for international protection will be submitted by the Canadian Trademarks Office to the International Bureau of the World Intellectual Property Organization, who, in turn, will forward brand protection extension requests to national trademark offices for examination under national rules. For Canadian companies, use of this system requires a Canadian application or registration for the specific goods/services as a prerequisite. Canadian businesses can prepare to take advantage of this system as soon as possible by ensuring they have Canadian applications or registrations in place, along with a list of preferred foreign countries for extended protection. Read our related article here.

The changes to the Trademarks Act bring not only new challenges and some uncertainty, but also opportunities for businesses and trademark owners. In the few remaining months leading up to implementation of the changes, we urge businesses to focus on, and take advantage of, those opportunities.

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.

Authors
Cynthia Rowden
Meghan Dillon
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions