Canada: Only 14 Days Left To Avoid Hiking Of Fees In Canada

Last Updated: May 31 2019
Article by S.S. Rana & Co. Advocates

The Canadian Government in 2014 proposed amendment to the Trademarks Act. The Canadian Intellectual Property Office released draft Trademark Regulations for consultation and the finalized regulations were published in the Canadian Gazette1 on November 14, 2018. After nearly five (05) years of uncertainty and speculation, the much-awaited new Trademarks Act in Canada will come into force on June 17, 2019.

Under the new legislation, Canada will adopt and implement three (03) international treaties, namely:

  • Singapore Treaty on the Law of Trademarks (Singapore Treaty)
  • Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol)
  • The Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement).

Accession to the aforementioned Treaties by Canada will foster international competitiveness for intellectual property owners and reduce cost and complexity of entering foreign markets. In addition, the federal government has committed C$85 million in funding over five years to develop an IP strategy, which includes IP awareness, education and strategic tools for owners.

TRADEMARK FILING NOW VS AFTERWARDS IN CANADA

1. File now to avoid hike of fees

Once the new law comes into effect in Canada, goods and services will need to be classified according to the Nice Classification system. Therefore, it is advisable that brand owners file application for their mark(s) before the new trademark law comes into effect, since the government filing fee will be increased to C$330 for the first class and an additional fee of C$100 will be payable for each class of goods/services covered by the application. Currently, the government filing fees are only C$250—regardless of how many goods and services one includes in their trademark application.

The easiest way to avoid the hike in fees is to file now!!!! Doing so will permit applicants to file multi-class applications while avoiding the fees for additional classes and securing rights to trademarks for which they will not be required to declare use prior to registration.

2. Declaration of use no longer required

The application filing process will be simplified since the previous requirement to include a basis for filing a trademark application will no longer be in effect.

The downside of the same is that it will allow an applicant to file for and obtain a trademark registration without ever having used that mark anywhere in the world and the same would increase the risk of trademark squatting.

Since, there will be no requirement for filing basis, it will be possible for any third party to register and own any mark in case the same has not been registered in Canada before. Therefore, under the new trademark law, being the first-to-file, an application will be highly important.

Under the current Canadian trademarks regime every application must contain a "use" grounded filing basis. Applications can be based on use of the trademark in Canada, proposed use of the trademark in Canada, the trademark having been used abroad and made known in Canada or use and application/registration of the trademark abroad. Accordingly, there has been, and continues to be a massive surge in applications over the last year as businesses bolt to secure protection for their marks (and their desired marks).

3. Filing of early renewal possible

Renewal fees once the new law comes into effect will be calculated based on the number of classes, namely C$400 for the first class, and C$125 for each additional class, instead of the current fee of C$350 regardless of the number of classes.

However, registrations due for renewal after June 17, 2019, can be renewed early (for a 10-year term) and the current government renewal fee will be payable and no "per class" fees will be incurred.

Therefore, there may be significant cost savings associated with classifying and renewing prior to June 17, 2019 in case of multi class applications in Canada.

KEY HIGHLIGHTS OF THE NEW TRADEMARKS ACT ARE AS UNDER:

1. Expanded Definition of Trademark

The definition of a trademark will be greatly expanded and changed to the term "sign" and will include virtually anything that functions as an indicator of source, including non-traditional trademarks such as colors, scents, tastes, textures, moving images, and holograms.

2. The Nice Classification

Applicants will now be required to classify the goods and services listed in their application in accordance with the Nice Classification i.e. the international standard for classifying goods and services.

3. "Use" of a Trademark will no longer be required for registration

The new trademark legislation will eliminate the need to include filing grounds in an application. With simplified trademark applications, there will no longer be the need to identify the date of first use of the mark.

The obligation to file a Declaration of Use will no longer be required and the same will apply to all new applications as well as all the pending applications.

As of June 17, 2019, for all allowed applications where the only substantive requirement is the filing of a declaration of use, applicants will merely have to pay the official fee i.e. CA$200 registration fee.

4. Adoption to Madrid Protocol

Canada will adopt the Madrid Protocol i.e. securing international registration of trademarks. The local business owners are the ones who are bound to benefit the most by seeking protection of their trademark in territories of nearly 100 member countries through a single application. In addition, the foreign applicants would also be able to obtain protection of their trademark by designating Canada in their Madrid Application alongwith other member countries.

5. Shorter Renewal Period and Fees

The renewal period under the new trademark law has been reduced from 15 years to 10 years. Trademark renewals, as a result, will need to be filed every 10 years to ensure that protection is ongoing.

6. Division of Application

It will be possible to divide applications, which may be beneficial during prosecution or opposition proceedings in case some of the goods or services are objected or opposed.

7. Priority Claim

Under the new law, it will be permissible to claim a priority filing date from an application filed within 6 months of a Canadian filing as long as that application was filed in the applicant's "country of origin".

8. Associated Marks

All associations will be removed from existing registrations and no further associations will be permitted.

Footnote

1 http://gazette.gc.ca/rp-pr/p2/2018/2018-11-14/html/si-tr100-eng.html

For further information please contact at S.S Rana & Co. email: info@ssrana.in or call at (+91- 11 4012 3000). Our website can be accessed at www.ssrana.in

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Practice Guides
by Mondaq Advice Centres
Relevancy Powered by MondaqAI
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions