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Trademark reform is here soon

A five-year overhaul of trademark law in Canada is complete on Monday, June 17, 2019. 

In the first significant reform since 1953, the trademark legislation in Canada has been overhauled to implement international treaties, among other changes. 

  • The term of registration (or renewal) of a registered trademark reduces to 10 years, from 15 years. 

  • Registrations have been expanded to cover non-traditional marks, such as 3D marks, holograms, scents, tastes, textures, colours, and sounds. 

  • Fees have been hiked, depending on the number of categories of goods or services associated with a trademark application, which categories must be identified. 

  • Registration procedures have been simplified; chief among these, and quite controversially because of the “check” on registrations they provided, “declarations of use” have been eliminated. 

  • Multi-national applications can be filed through the World IP Office, or WIPO, using a procedure called the “Madrid System.” 

Brand owners have an opportunity to take advantage of the current rules. For example: 

  • Brand owners may wish to file Canadian trademark applications before the new rules are in place, given the current low fees and the “first-to-file” examination practice.

  • There is no need to wait until June to file for non-traditional marks

  • Registered owners may wish to renew their registrations early, to take advantage of the current low fees and avoid a new categorization (classification) requirement on renewal. 

The Canadian IP Office offers many resources on the new trademark legislation including the transition rules. Learn more.