Trademark law in Canada is undergoing a major change this year that will go into effect on June 17, 2019. We have compiled the three things you need to know and important steps you may want to take before the June 17, 2019 date passes.
1. Length of Registration is Changing from 15 to 10 Years
Perhaps the biggest change coming out of these amendments is the reduction in the term of registration from 15 years to 10 years for all registrations issued on or after June 17, 2019 and all registrations with an effective renewal date on or after June 17, 2019. If you have any registrations within the renewal window, you can renew those registrations early at a lower cost.
2. You Will No Longer Have to Prove Use of Your Mark in Canada to Obtain a Registration
Another major change will be the elimination of the “proof of use” requirement to obtain a trademark registration in Canada. After June 17, 2019, applicants will no longer be required to file a Declaration of Use attesting it has actually used the mark in Canada to obtain a registration. Actual use of the mark and documentation of that use in Canada will still be required for enforcement, including, for example, in challenges to your rights on the grounds of abandonment due to non-use.
If you are currently prosecuting an application in Canada and you are running into the Declaration of Use deadline but use has not begun in Canada, you may want to consider extending the deadline beyond June 17, 2019 (or simply waiting until the date has passed) so you can obtain your registration without doing more.
3. Canada Will Now Use the “Class” System for Goods and Services Used in the U.S.
Under current Canadian trademark law, you can file an application for a broad list of goods and services under a single filing fee. In the U.S., for example, you have to pay a $275 filing fee for each “Class” or category of goods and services you claim in the application. Moving forward, Canada will have a system similar to the U.S. requiring applicant’s to classify their goods and services into Classes and pay a fee for each Class claimed. For new trademark applications, the costs for an application in a single class will decrease from CDN$450 to CDN$330; however, there will be a CDN$100 fee for each additional class included in the application. Clients looking to file new applications with very broad descriptions may want to get applications on file before June 17, 2019 to avoid the higher filing fees.
Renewals will also be more expensive after June 17, 2019 due to the classification of goods and services. Specifically, the cost to renew a trademark will increase from CDN$350 to CDN$400 for the first class, plus CDN$125 for each additional class. Again, if available, early renewal before June 17, 2019 may be advisable for cost savings.