As reported previously in our Alerts of April 1 and June 20, 2014, substantial changes are coming to the Canadian trademarks regime, designed to bring Canada's trademark system in line with its global treaty obligations.
A hot topic of discussion among trademark practitioners, trademark owners and the Canadian Intellectual Property Office (CIPO) is that of how CIPO is handling the early renewal of trademark registrations. Currently, registrations may be renewed for fifteen years; however, under the new regime, registrations will be renewed for only ten years.
In the circumstances, a number of trademark owners may be tempted to pursue early renewal, so as to secure a fifteen year renewal term before the new legislation is brought into force.
However, we recommend avoiding any rush to renew early at this time, as it appears that CIPO's current position is that the applicable term of renewal is determined by the version of the Trademarks Act which is in force as of the actual date of renewal (i.e., the date when the previous term actually expires), not the date on which the renewal request is made.
In other words, it may not be possible to secure a fifteen year term of renewal if the new Trademarks Act comes into force before expiry of the existing term. CIPO has recently suggested that even where it issues a certificate of renewal with a fifteen year term – which it is apparently currently doing – the renewal term set out in a certificate may not be honoured, and the operation of law (i.e. ten years from the expiration date) will govern the actual term of renewal.
We also understand that there have been discussions about possibly reducing the required renewal fees, to reflect the shorter renewal term available. Hence, anyone paying for early renewal, but whose registration is ultimately only entitled to a ten year renewal term, may be paying more now than if they wait for their renewal deadline. We do not know if CIPO intends to refund overpayment of any such renewal fees.
On the other hand, we recognize that there is a possibility that CIPO will introduce per class renewal fees, which could increase the total cost of renewing registrations for multiple class registrations after the new Act comes into force. If that is indeed the case, then early renewal may make sense for some registrations.
Given the current uncertainty surrounding the renewal of trademark registrations, and the possibility of paying for a fifteen year renewal (possibly at a higher rate) and receiving only ten years, it does not appear appropriate at this stage to rush to file early requests for renewal. We will be providing further updates as soon as we receive additional information from CIPO.
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