The Government of Canada announced that amendments to
Canada's trademark laws, including adherence to the Madrid
Protocol, will come into force on June 17, 2019. New Trademark Regulations were also
published.
In anticipation of the new laws, it would be prudent to consider or
implement the following:
- Protect Brands by Filing Early. The new legislation
removes the requirement that marks be used before registration.
This is expected to increase incidents of trademark
"trolling". Filing early decreases this risk.
- File Applications for New Marks. The adoption of Nice Classification of goods and services will
bring per-class fees resulting in higher filing costs. Therefore,
consider filing new applications in Canada as soon as possible for
new marks to save on government fees and secure rights against
third parties. For now, multi-class applications are still
available for a single government fee.
- Fill in Gaps. To protect marks of interest, consider
whether current coverage in existing applications and registrations
properly reflects all the marks of interest, covers all goods and
services of interest, and covers the current presentation of the
marks. Fill in gaps by filing new applications to cover all
important marks and goods and services.
- Renew Existing Registrations Early. The term of registration will be shortened from 15 to 10 years and, like applications, fee-per-class will be introduced upon renewal. Therefore, consider renewing registrations due in 2019 early to save fees.
For further information, please contact any member of our IP Group. We will have more detailed information for you regarding these changes in the coming weeks.
The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.
