Canada is moving toward implementation of provisions set out in the Economic Action Plan 2014 Act which will bring significant changes to the Canadian Trade-Marks Act. The specific date upon which the changes will come into force is unknown, but expected to fall in late 2015 or early 2016.
Trademark registration renewal practice before the Canadian Intellectual Property Office ("CIPO") will provide that:
- Renewal can only be requested 6 months before a registration's expiry date and up to 6 months after that expiry date.
- Registrations issuing after implementation will have 10 year terms and will be renewable for subsequent 10 year terms.
- Existing registrations due for renewal prior to the implementation date will be renewed for 15 years as permitted under the current provisions of the Trade-Marks Act.
- Registrations issued before implementation that are due for renewal after the implementation date will be renewed for 10 years.
Registrants should be aware that:
- CIPO is discouraging "early bird" renewals. Registrants seeking to renew registrations too far in advance of the end of a 15-year term prior to the coming into force date for an existing registration will have the actual renewal period curtailed to 10 years.
- CIPO is not able to address possible renewal fee changes at this time.
- CIPO will shortly undertake public consultation on various fee requirements, including possible changes to renewal fees.
- Proof of use of a registered trademark is not currently required for renewal and that will not change.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
