On June 17, 2019, certain amendments to the Canadian Trademarks Act (the “Act”) and Trademarks Regulations (the “Regulations”), come into force, which amendments may impact your intellectual property.

The Amendments

The amendments to the Act and Regulations include the following, effective June 17, 2019:

“Trademark” Definition Expanded: Non-traditional marks such as holograms, moving images, sounds, tastes, scents and personal names may be trademarked.

Filing Basis: Trademark applicants will no longer be required to claim a basis of filing for a trademark application. Currently, trademark applications must specify a basis for filing, including registration/application abroad, prior use in Canada or intent to use. All such basis of filing will be eliminated.

Use Not Required: “Use” of the trademark by an applicant will no longer be required prior to registration of such trademark. This is a significant change to trademark law, which will permit trademark applications to be registered in Canada, before such trademark is actually used in Canada. This amended law will apply to pending trademark applications.

Nice classification: Goods and services claims of a trademark application must be classified in accordance with the Nice classification system, the international standard for classification of goods and services. The Nice classification system requires goods and services to be classified into one of forty-five classes. 

Filing Fees: Trademark application filing fees will be charged based on the number of Nice classifications specified in a trademark application. Fees will be increased from the current flat fee of $250.00 per application, regardless of the number of claims, to $330.00 for the first class claimed, plus $100.00 for each additional class claimed.

Reduced term of protection: Trademarks registered after June 17, 2019 will be subject to a 10-year period of registration. Such term is reduced from the 15-year registration period that trademarks registered prior to June 17, 2019 are subject to.

Renewal Fees: As of June 17, 2019, the fee to renew a trademark will be based on the number of Nice classes that the trademark claims, rather than a flat renewal fee. The fee for renewal will be $400.00 for the first Nice class, plus $125.00 for each additional class. Such new fees are a marked increase from the current flat rate of $350.00 to renew a trademark, regardless of the number of Nice classifications specified in the trademark application. 

Adoption of the Madrid Protocol: With the adoption of the Madrid Protocol, trademark applicants will be permitted to file a single application through the International Bureau of WIPO, which application can seek trademark protection in multiple countries. Currently, applicants seeking protection in multiple jurisdictions are required to file individual applications with the trademark offices of each jurisdiction. The adoption of the Madrid Protocol will streamline the international application process and significantly reduce application costs.

Division and merging of Applications: trademark applicants will be permitted to separate goods and services claims of a trademark application into multiple applications. This may be beneficial to a trademark facing certain barriers to registration, as uncontested claims can proceed to registration, while contested claims are debated. Any claims divided from an application during the application process, can be merged into one registration once any issue is resolved.

Suggested Actions for Trademark Owners and Applicants

We suggest that trademark owners and any person considering applying for a trademark, should consider taking the following actions prior to June 17, 2019:

File: File any trademark application claiming multiple Nice classes prior to June 17, 2019, to avoid the per class filing fee. Further, we suggest filing any trademark, regardless of the number of classes claimed, prior to June 17, 2019 in order to take advantage of the 15-year trademark registration term.

However, if you are considering filing a trademark in several jurisdictions, it may be advantageous to make such filing after June 17, 2019, as the adoption of the Madrid Protocol and the corresponding ability to file in multiple jurisdictions through one application, will significantly reduce filing fees for trademark applicants.

Renew: Renew trademarks before June 17, 2019 in order to avoid renewal fees charged per Nice class. Trademarks may be renewed within the 12 months prior to the expiration of their registration term.

Expand Trademark Claims: Owners of registered trademarks may want to consider expanding their goods and services claims, as use will no longer be a requirement of registration. This will allow trademark owners to expand the scope of their trademark protection. It would be beneficial to attend to such expansion prior to June 17, 2019, in order to avoid the per class filing fees.

If you have any questions or would like assistance with your trademark applications, renewals or amendments, please contact us at 604-688-4900 or by email at morgan@barbeau.co or paul@barbeau.co.