Canada: Act Now Before Canada's Trademark Laws Change

One month from now, on 17 June 2019, the federal government is changing a number of the Canadian trademark rules and regulations. The wide scope of amendments may have a significant impact on your business, particularly if you currently own a registered trademark or are planning to register one in the near future. You may want to take advantage of the current trademark laws to potentially save you or your company time and money.

Amongst the many changes are increases to the trademark registration and renewal fees after the new laws come into force on 17 June 2019. One of the key changes that are affecting costs is that all new registrations and renewals after mid-June must abide by the NICE Classification System, which is an international classification system adopted around the world to more easily permit and protect the registrations of trademarks in different countries. This means trademarks filed or renewed will be required to classify all of the goods and services associated with each mark. The new rules will add additional fees for each class of goods or services.

Listed below are the differences in government filing fees and renewal dates to note and take advantage of before the legislative amendments come into force on 17 June 2019:

On or before 16 June 2019:

  • New registrations are $250, regardless of the number of classes for the goods and services.
  • If the trademark renewal is done on or before 16 June 2019, regardless of whether the renewal is early or not, the renewal will be valid for 10 years and the renewal fee will be $350, regardless of the number of classes for the goods and services.
  • A trademark, renewed early, retains its current renewal date and the renewal granted extends time on to that date. For example, if a mark expires on 24 Oct 2021 and it was renewed before 17 June 2019, then the next renewal date would be 10 years after its original renewal date – 24 Oct 2031.

On or after 17 June 2019:

  • New registrations will be $330 for the first class of goods or services and $100 for each additional class.
  • Renewals will be $400 for the first class and $125 for each additional class.
  • Renewals can only be processed during a legislated processing window, which is within 6 months of the renewal date.
  • All registrations and renewals will be valid for 10 years.

*NB: The government fees quoted above are based on renewals filed online.

If you are interested in renewing an existing Canadian trademark on or before 16 June 2019, our legal fees to process renewals are $350 + taxes per mark, plus the government fees noted above. If you would like to start a registration, our legal fee estimate is $2,500 + taxes per application for a routine trademark application that does not meet significant opposition; this fee estimate includes our legal fees and government filing fees.

For all new Canadian trademark applications that we process from 17 June 2019 onwards, our legal fees to draft and file the initial application are $1,000 + taxes, plus the government fees noted above. Hourly rates will apply as the mark moves through the registration process. A standard registration, with minimal or minor issues, can usually complete for approx. $2,500-3,000 in legal and government fees, plus taxes, with substantive opposition proceedings adding to the costs. Our legal fees to process renewals after 17 June 2019 will be $350 + taxes per mark, plus the government fees noted above.

Some of the other changes to Canada's trademark laws are highlighted in our previous post; please click here. Check back at the end of the month for a final post summarizing all of the major changes.

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.

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