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