Changes offer Canadian applicants access to streamlined foreign filing opportunities.
In June 2014, major amendments
were passed to Canada’s Trademarks Act. While the expected implementation date
has been postponed several times, the current estimated coming-into-force date
is early 2019. The changes impact everything from application to renewal, and
they offer Canadian applicants, for the first time, access to streamlined
foreign filing opportunities.
• Simplified applications. No more filing grounds (use, proposed use or use and
• Use as a registration requirement will be eliminated.
• New government filing, registration and renewal fees.
registration fees will go from $450, in total, regardless of the number of
goods/services in any application/registration, to a fee system based on the
“Nice Classification of Goods and Services,” which divides goods/services into
45 classes, with fees payable per class. The recommended costs will be $330 for
the first class and $100 for each additional class. Renewal fees are expected
to be $400 for the first class and $125 for each additional class. The impact
on any business will depend upon the number of goods/services covered. Some
applicants, with only one class of goods, may find application fees drop, while
others may see a significant increase in government fees.
• Renewal terms will change to 10 years from 15 years, in line with most other
• Canadian companies can file internationally using the Madrid Protocol.
Canadian applicants and registrants will
be able to request the Canadian Trademarks Office to submit instructions to the
World Intellectual Property Organization to transmit applications to local
trademark offices up to 115 countries, which will examine applications under
local laws. It will no longer be necessary to file “national” applications in
local languages using local counsel (although there may be strategic reasons to
do so). Instead of obtaining local “registrations,” applicants will obtain a
single “international” registration designating specific countries. This change
should offer significant cost savings to companies seeking expanded global
protection for their brands.
of these changes, Canadian companies should undertake an audit of their brand
portfolio, both to avoid possible increased costs and to take advantage of new
opportunities for expanded brand protection in Canada and elsewhere.
what you should be looking for:
1. Do you own Canadian
trademark registrations for the brands you use and the goods and services you
sell now? Since filings after the CIF date may be more expensive once the
fee-per-class system is implemented, take advantage now of lower government
fees to shore up your brand portfolio.
2. Consider how your business may expand, and file in Canada now for a wish list
of goods and services. Applications filed now and pending at the CIF date will
benefit from the elimination of Canadian use requirements. While registrations
that issue without any valid intent to use may not be enforceable, taking a
defensive registration strategy may provide competitive advantages.
3. Renew registrations “early” to avoid classification fees. The Trademarks Office
has suggested that class fees may be avoided if renewals are processed before
the CIF date. This will be particularly advantageous for owners of
registrations for long lists of goods/services. Why not renew them now and
avoid future fees per class? You won’t be able to change the renewal term (the
shorter term will still apply to any renewals due after the CIF date), but you
might significantly reduce renewal fees.
4. Get ready to expand your
brands globally using the Madrid Protocol. You’ll need a Canadian application
or registration for the exact mark and the specific goods/services you want to
protect abroad. That involves checking to make sure Canadian word and design
applications or registrations are for current versions and that Canadian
goods/services lists cover present and future plans. Once your Canadian rights
are in place, make a list of countries and budget for filing costs. Your
trademark advisor will be able to assist with filing instructions as soon as
the amendments are declared in force.
proactive steps now to prepare for the amendments offers opportunities for cost
savings and the potential for broader rights in Canada and globally. Canadian
companies should act now to ready themselves for this new trademark landscape.
Canada has also
just begun its review of the Copyright Act, and it remains to be seen what
changes will come to the copyright landscape. Stay tuned.
Rowden is counsel and trademark agent with intellectual property law firm
Bereskin & Parr LLP in Toronto. She specializes in all areas of trademark
and copyright law, managing international trademark portfolios of large
Canadian companies and the Canadian portfolios of some of the biggest trademark
owners in the world.