Canada’s Trademark laws will see major changes in June 2019

By Randy Marusyk and Hyun Woo Choi, November 26t^h, 2018

It has been announced on November 14, 2018 in the Canada Gazette (Part II, Volume 152, Number 23) that amendments to the Canadian Trade-marks Act will be coming into force on June 17, 2019. On the date of this announcement, the new Trademarks Regulations, which also will be coming into force on June 17, 2019, have been published. By virtue of these changes, there will be notable impacts on Canadian trademark regime in many aspects including registration process, and Canadian Trademark law will be in line with major international trademark treaties such as the Singapore Treaty on Law of Trademarks (Singapore Treaty), the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol), and the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement).

Some of the important changes to Canadian Trademarks law are summarized below:

• Expanded definition of “Trademark”: The definition of “Trademark” will be expanded to include “a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign”;

• Increased Government Filing and Renewal Fees: Filing fees and renewal fees will increase and will be charged on a per class basis:
  • The Government filing fee will be $330 for the first class and $100 for each additional class (currently the fee is $250, regardless of how many classes you file in).
  • The Government renewal fees will be $400 for the first class and $125 for each additional class (currently the renewal fee is $350, regardless of how many classes you renew in). For  trademarks with multiple classes, there is a significant cost savings to renew before June 17, 2019, and even for trademarks with only one class of goods and services there is still a small saving of $50.To illustrate with numbers: the cost of renewing a trademark with 6 classes after June 17, 2019 will be: $400 (1^st class) + ($125 x 5 additional classes) = $1,025 in government fees vs. $350 in government fees if renewed before June 17, 2019.

• Adoption of the Nice classification system: Goods and services in a trademark will need to be classified according to the Nice Agreement classification system, as in many other countries;

• Date of first use will no longer be required: Identifying the date of first use of a trademark in Canada will be removed from the application;

• Declarations of use not required for a “proposed use” application: Applicants will no longer be required to file a declaration of use in order for the application to proceed to registration;

• Ability to divide and merge applications: A trademark application can be divided to expedite the registration process, especially when there is opposition to certain goods or services. Divided applications and registrations can be merged later;

• New registration period: The registration period for trademarks will be shortened from 15 years to 10 years and the renewal of a trademark registration will be required every 10 years. Terms for existing trademark registrations will remain 15 years; and

• International filing through a single application: Canada will be joining the Madrid Protocol. As such, will be able to file a trademark application in multiple countries (that are members of the Madrid Protocol) through a single application. 

Recommendation given the new legislation: if you have clients who are considering filing trademarks, especially multi-class applications, there could be significant cost savings if filed before June 17, 2019. As mentioned above the current Government Fee for filing regardless of how many classes you file in is $250, however, after June 17, 2019, the government filing fee will be $330 for the first class and $100 for each additional class. The same is applicable for renewals, it is recommended to renew before June 17, 2019, especially multi-class applications, as renewal fees will be going up, $400 for the first class and $125 for each additional class. Even if you renew now, before June 17 2019, the new term (10 or 15 years) will be calculated from the actual renewal due date NOT when you paid the renewal fee.

For more information please contact:

 
Randy Marusyk, Partner

T: 613.801.1088

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Hyun Woo Choi, Articling Student

T: 604.239.0274

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