The Countdown to June 17, 2019 is On: Act Now to Protect Your Trademark Portfolio and Save Money before Canada’s New Trademark Regime Takes Effect

31 mai 2019 | Catherine M. Dennis Brooks, David Schnurr

( Disponible en anglais seulement )

On June 17, 2019, the long-awaited changes to Canada’s trademark regime will take effect. The key changes were highlighted in our previous IP alerts published November 22, 2018June 22, 2017, October 26, 2015 and June 23, 2014. In light of these changes, we would encourage owners of Canadian trademarks and those who have an interest in protecting their marks in Canada to do the following:

1. Review

Brand audits should be performed to assess whether additional applications should be filed in light of the changes:

a. Assess whether additional Canadian trademark applications should be filed now to allow for international trademark applications to be filed through the Madrid Protocol to provide trademark protection in any of the more than 120 Madrid Protocol countries; and

b. Determine whether additional applications should be filed to take advantage of protection that will be available for non-traditional trademarks.

2. File

a. File declarations of use and pay registration fees now for allowed applications, if possible. Registrations issued before June 17, 2019 will have a 15 year term rather than a reduced term of 10 years for registrations issued on and after June 17, 2019.

b. File multi-class trademark applications NOW to avoid higher per-class government filing fees on and after June 17, 2019. Currently, the government filing fee is $250 regardless of the number of classes of goods or services. On and after June 17, 2019, the government filing fee will be $330 plus $100 for each additional class. For organizations with multi-class applications to file, the excess class fee savings will quickly add up.

3. Renew

Renew NOW to avoid higher renewal fees, defer Nice Classification amendments and, for eligible registrations, obtain a 15 year renewal term rather than the new 10 year term. Per-class renewal fees will result in higher renewal fees on and after June 17, 2019 for multi-class registrations. Currently, the renewal fee is $350 regardless of the number of classes of goods or services. On and after June 17, 2019, the renewal fee will be $400 plus $125 for each additional class.

Importantly, under current laws,  there is no limit to how far in advance an existing trademark registration can be renewed and you may renew a registration for an unlimited number of renewal terms. As of June 17, 2019, registrations will be capable of renewal only within 6 months of the renewal date and renewals for multiple renewal terms will not be permitted.  For many organizations, including organizations with large trademark portfolios and/or a number of existing multi-class registrations, the costs savings (in government fees alone) could exceed tens of thousands of dollars.

4. Watch

As the changes are expected to result in a significant influx of new trademark application filings in Canada, it will be more important than ever to monitor new filings through review of published applications and subscription to a watch service.

Current watch service subscriptions should be modified to provide alerts to filed applications in addition to published applications as the new laws include a third party notification procedure that allows trademark owners to notify the Registrar of prior rights in trademark applications and registrations; this may help to avoid more costly opposition proceedings.

5. Instruct

For existing allowed applications for which use of the mark will not be made prior to June 17, 2019, provide instructions or arrange to pay registration fees for allowed applications on or soon after June 17, 2019.  This will allow trademark applications filed on the basis of proposed use to proceed to registration without the need to file a declaration of use.

The changes to the Canadian trademark regime which will come into force on June 17, 2019 present both challenges and opportunities for existing and potential new trademark owners in Canada. A well-thought-out strategy, executed both before and after the effective date, could provide an excellent opportunity for trademark owners to enhance the value of their intellectual property portfolio and save money.

Other Notable Items

The Canadian Intellectual Property Office (“CIPO”) has very recently issued notices regarding the following:

  1. CIPO Blackout Period – The Canadian Trademarks Office electronic services that allow for electronic filings of trademark applications and statements of opposition, as well as payment of registration fees and trademark renewals, will be temporarily unavailable from June 13, 2019 until 6 am EST on June 17, 2019. Access to the online CIPO Trademarks Database will also be unavailable. Non-electronic filings can be made, but it is recommended that communications with the Trademarks Office be filed in advance of June 13, 2019, if possible.
  2. Madrid Protocol Test Environment – A test environment for the electronic filing of international trademark applications using the Madrid Protocol is now available for testing and training purposes. Access to the Madrid electronic filing test environment requires a World Intellectual Property Organization (“WIPO”) account and allows access to the Fee Calculator for the Madrid System which will allow applicants to determine the fees related to an application for international registration.

In Summary

The upcoming changes to the Canadian trademark regime are very significant and, as such, represent both opportunities and, in some cases, additional risks for owners who have trademarks or who are intending to protect their trademarks through registration in Canada.  We urge holders of such IP to act now to thoroughly familiarize themselves with the changes and the implications for their business.

If you have any questions, please do not hesitate to contact your Miller Thomson trademark professional.

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