Significant changes are coming to the Canadian Intellectual Property Office (CIPO). The changes were passed into law in June 2014. The new law is not yet in force, but will be in force on June 17, 2019.
Changes to come into effect as of June 17, 2019 include:
- Membership to the Madrid Protocol: Canada will join the International Registration system so it can be designated as an extension country from an existing or new International Registration filed through the World Intellectual Property Organization.
- Classification Requirement: Canada will adopt the Nice Classification system, which is the current system in effect in the U.S and most other countries. Classifications of goods and services will be mandatory. Eventually all existing trademark registrations not classified will require reclassification.
- Elimination of Use to Secure Registration: Neither a declaration of use nor a date of first use will be required to secure a Canadian trademark registration. Use will still be necessary to determine priority of rights and to defend against a nonuse cancellation.
- Elimination of Foreign Registration Basis: The foreign registration filing basis will be eliminated. This means that it will no longer be possible to rely on a U.S. trademark registration to secure trademark protection in Canada. Priority claims will remain.
- New Bar to Registration: There will be a new bar to registration, “lack of distinctiveness.” This refusal means that the subject application does not function as a trademark.
- Acceptance of Letters of Protest: Letters of Protest allow a third party to notify the trademark office of evidence bearing on the registrability of a trademark. CIPO will accept Letters of Protest bearing on confusion any time up to registration.
- Division of Applications: Classes will be permitted to be divided from the application. A class that is subject to a refusal or an opposition will be able to be separated out so that the remainder of the application can register.
- New Trademark Protection: Nontraditional trademarks such as color, taste, holograms, sounds, and texture, as well as others, will be registrable.
- Elimination of Registration Fee: The $200 registration fee will be eliminated. Marks accepted for publication, published, or allowed before the new law is in force may still be subject to this fee.
- Change of Registration Term: The registration term will go from 15 years to 10 years.
- Assignments and Merger: Recording of assignments and mergers will be simplified by eliminating the need for supporting documents.
- Increase in Official Fees: Application filing fees and renewal fees will increase and the CIPO will charge additional per class fees.
| Current Official Fees (CAD) | New Official Fees (CAD) | |
|
Filing |
$250 (unlimited classes) | $330 for one class $100 for each additional class |
| Renewal | $350 (unlimited classes) | $400 for one class $125 for each additional class |
What does this mean for you?
Trademark Registration
Trademarks filed now are expected to be examined under the new trademark rules and should not require use to secure registration.
Beware: Trademark trolls are taking advantage of the current low official filing fees ($250 – unlimited classes) and the fact that a trademark filed now is unlikely to require use to register. Trademark trolls have started filing trademark applications for marks that are similar to existing U.S. and foreign brands, covering all 45 available classes. These trademark applications (and any eventual registrations) can serve as a basis for a confusion refusal and prevent registration of a brand owner’s important trademarks in Canada. In some cases, they may be used for ‘extortion’ by requesting payment for assignment of their trademark(s) to your company.
In Canada, cancellation due to nonuse is not available until a trademark has been registered for at least three (3) years. Oppositions and litigations are costly alternatives. Earlier filing is therefore recommended to avoid this costly scenario.
If you do not have protection of your trademark in Canada, now is the time to file!
Canadian Trademark Renewal
The current official fee for a trademark renewal is $350 (CAD) regardless of how many classes are listed in the registration.
Specimens, declarations of use, or actual use in Canada are NOT required in order to renew.
A trademark registration may be renewed now, regardless of when the renewal term expires. You may renew your entire Canadian trademark portfolio.
The new renewal term will depend on when the current term ends. A trademark renewed now will have a term of:
- 10 years, if the renewal deadline falls after the new law is in effect
- 15 years, if the renewal deadline fall before the new law is in effect
Reclassification
Since Canada did not previously adopt the Nice classification system, legacy trademark registrations are not classified. Currently, compliance with Nice classification is voluntary. However, CIPO will eventually require mandatory reclassification of all trademark registrations.
Watch Services
To keep an eye out for infringing applications, brand owners may wish to include Canada in any watch service subscriptions. This can be useful in conjunction with Letters of Protest.
Conclusion
Now is a good time to review your trademark portfolio and file for trademark protection in Canada before the official fees increase and before per class fees are added. Canadian trademark portfolios may and should be renewed before the new law comes into effect.