March 19, 2019

About the Author

  • Silvia de Sousa

    Silvia’s practice is concentrated in the area of business law with an emphasis on intellectual property law and technology law. Silvia is a trademark agent.

    svd@tdslaw.com
    (204) 934-2592

Major changes are coming to Canada’s Trademarks Act effective June 17, 2019. Here is what you need to know:

  1. More Expensive

Filing a trademark application is about to become more expensive. In order to become more consistent with international trademark laws, Canada is adopting the Nice Classification system. Under this system, trademarks will soon be registered in Canada on a fee per class basis. This means the trademark application filing fee is rising – the cost for the first class will now be $330 CAD plus $100 CAD for each additional class, replacing the current filing fee of $250 CAD regardless of the number of classes.

Those considering filing an application should do so quickly to avoid these significant increases in costs.

 

  1. Elimination of Use Concept & Trademark Trolls

Those applying for trademark registration will no longer be required to identify the date on which they first used the trademark or state that they intend to use the trademark. Dropping this requirement will make it easier for trademark trolls to register your trademark with the intent to exploit you and your business. To get your trademark “back” will be costly as you may need to consider litigation, an opposition or an expungement.

Those considering filing an application should do so quickly to avoid the risk of a trademark troll owning your trademark and brands.

 

  1. Renewals

The registration term will be reduced from 15 to 10 years. Additionally, as Canada adopts the Nice Classification system the costs of renewing a trademark will also become more expensive. The registration renewal fee is rising – the cost for the first class will now be $400 CAD plus $125 CAD for each additional class, replacing the current renewal fee of $350 CAD regardless of the number of classes.

Those considering renewing a trademark registration should do so quickly to take advantage of the current registration term and avoid these significant increases in costs.

 

  1. Madrid Protocol

Canada is joining the Madrid Protocol, which will allow Canadian applicants to file trademark applications with the International Bureau of the World Intellectual Property Association (WIPO). This means you will be able to extend your Canadian application to other member countries of the Madrid Protocol through WIPO, potentially offering a simplified process and cost savings to Canadians considering filing trademarks in other countries where they do business.

Those considering filing for trademark protection in other countries should contact us.

 

  1. Watch Service

As the legislative amendments are expected to lead to an influx of Canadian trademark applications from applicants around the world, you may want to consider subscribing to a watch service in order to monitor new filings and identify potentially confusingly similar and infringing trademarks before they reach the registration stage, including those trademark applications filed by trademark trolls.

Those wishing more information on a watch service should contact us.


DISCLAIMER:
This article is presented for informational purposes only. The content does not constitute legal advice or solicitation and does not create a solicitor client relationship. The views expressed are solely the authors’ and should not be attributed to any other party, including Thompson Dorfman Sweatman LLP (TDS), its affiliate companies or its clients. The authors make no guarantees regarding the accuracy or adequacy of the information contained herein or linked to via this article. The authors are not able to provide free legal advice. If you are seeking advice on specific matters, please contact Keith LaBossiere, CEO & Managing Partner at kdl@tdslaw.com, or 204.934.2587. Please be aware that any unsolicited information sent to the author(s) cannot be considered to be solicitor-client privileged.

While care is taken to ensure the accuracy for the purposes stated, before relying upon these articles, you should seek and be guided by legal advice based on your specific circumstances. We would be pleased to provide you with our assistance on any of the issues raised in these articles.