Canada: Important changes regarding trademark applications

As from June 17, 2019, a new Trademarks Act will enter into force. Here are important points you need to get familiar with:

PROOF OF USE has been eliminated as a registration requirement

It means that clients will no longer be required to identify the basis of the application (“used since”, “proposed use”, etc.) (However, priority claims will continue to apply).

A declaration of use will not be required if the trademark is approved for registration. After the expiry of the opposition period the trademark will proceed to registration

No registration fee

There will be no fee for the registration (certificate) of trademark applications filed after June 17, 2019. Pending applications that have been allowed by or after June 17, 2019 will proceed to registration upon ordering the certificate with payment of a registration fee.

PROOF OF USE will remain valid for opposition purposes

It will be possible to oppose a trademark for lack of use or no proposed use in Canada. It is too early to know how the courts will apply those categories, particularly “lack of proposed use”.

However, clients should always keep proof of use of their trademarks, since a third party can request cancellation of the trademark for failure to use it after 3 years.

The NICE CLASSIFICATION SYSTEM will be implemented

Lately, we have been encouraged to classify the goods and services in new applications on a voluntary basis. As from June 17, 2019, regrouping goods and services according to the Nice Classification will become mandatory. For pending applications, we will do the classification if needed. For registered trademarks and trademarks renewals, the examiner will likely request to reclassify the goods and services, failing which the registration may be expunged.

FILING FEES will be per class

The new government fees in force on June 17, 2019 are:

  • $330 for the first class and
  • $100 for each additional class

Clients may consider filing now to take advantage of the current modest fees which do not take into account the number of classes.

ORDERNING A CERTIFICATE before June 17, 2109 for a term of 15 years

Currently the trademark mark registration term is 15 years. As from June 17, 2019 the registration will be valid for 10 years only. Clients whose trademark applications have been allowed can consider applying for a registration certificate before June 17, 2019 to take advantage of the current term of 15 years.

RENEWAL TERMS now 10 years

RENEWAL TERMS will be reduced to 10 years and RENEWAL FEES will be per class

The current renewal term of 15 years will no longer apply as from June 17, 2019. The new government renewal fees in force on June 17, 2019 are:

$400 for the first class and $125 for each additional class;

Clients can consider renewing their registered trademarks before June 17, 2019 to take advantage of the current term of 15 years and the government fees of $400 regardless of the number of classes.