Changes to Canadian Trademark Laws

It’s been four years since we’ve been hearing about the proposed amendments to the Trademarks Act of Canada. The changes that were proposed in June 2014, will now come into effect in the year 2019. A number of provisions and clauses have been changed to update Canadian trademark law to conform with international treaties and changes in technology.

Those working in the field of intellectual property across Canada have been discussing the amendments to the Canadian trademark laws. Here is a brief description of some of the changes made.

Main Highlights

Elimination of Pre-registration Use Requirement

Some of the groundbreaking changes to the law include the elimination of use as a registration requirement. This means that applicants will no longer have to adhere to the filing grounds, which includes use, proposed use and registration of the trademark abroad.

Filing Fees

There have also been changes in the filing fees. Filing and registration fees have been changed from a total amount of $450 to a comprehensive fee system based on the ‘Nice classification of goods and services’. This classification system has 45 classes into which all goods and services are divided. Cost will now be determined based upon the number of classes of goods and services listed in an application. The recommended costs for the first class of goods/services is $330, with an additional $100 for each additional class. The changing in filing and renewal costs will have a different impact on different business based on their good and services.

Renewal Period

The government has also proposed changes in the renewal term. Previously the term was 15 years, however it has been changed to 10 years, which is in line with other countries.

International Registration

Under the Madrid protocol, Canadian companies will now be able to file for their trademark registration internationally. This is one of the most beneficial changes for businesses in Canada. Once this amendment comes into force, Canadian applicants will be able to request the Canadian Trademarks Office to submit instructions to the World Intellectual Property Organization to transmit their applications in up to 115 countries. This means that applicants will no longer have to file national applications in local languages and may instead file an international registration for their trademarks.

Things Canadian businesses should pay attention to

  • One of the things that Canadian businesses need to look into is whether all their products and services are trademarked. And if they are not, then doing it before the changes are amended could be a good idea, as the registration fees are likely to increase under the fee-per-class-system.
  • Companies should also take a look at their business expansion strategy and consider a wish list of goods and services they want filed in Canada. Applications filed now and pending at the time the new changes come into force will benefit from the elimination of Canadian use requirements.

These were some of the amendments made to the Trademarks Act of Canada. If you wish to learn more about this topic, then get in touch with intellectual property professionals in Edmonton.