Canada's trademark regime is changing, bringing about dramatic amendments to the law, regulations and practice. These long-awaited changes will have a significant impact on brand owners in terms of both strategy and costs.

Some of the most notable changes include (among other things):

  • the introduction of a fee-per-class structure for new multi-class applications and renewals;
  • a reduction in the term of registration from 15 years to 10 years; and
  • the abolishment of filing grounds and declarations of use.

The changes will come into force on 17 June 2019. Brand owners can benefit by taking early action to mitigate risk and save money on their Canadian trademarks.

In order to prepare for the changes, brand owners should:

  • Renew and classify registrations as renewal fees will rise significantly under the new law. As there is no limit on how far in advance registrations can be renewed, brand owners are encouraged to renew all registrations now. Brand owners should also consider classifying goods and services at the same time, as classification will be required in the future.
  • File multi-class applications before 17 June 2019 as there is currently a flat fee for filing applications, regardless of the number of classes. The new law will introduce a fee-per-class structure, thus increasing costs.
  • Push allowed applications to registration as any registrations issued before 17 June 2019 will have a 15-year term instead of a 10-year term. For all allowed applications, file declarations of use (if possible) and pay registration fees early to try to secure a registration before 17 June 2019.
  • Ensure that all portfolios are troll-proof. The presence of trademark trolls has increased in Canada due to the impending elimination of the use requirement to secure a registration. If a troll files first, it could block brand owners' applications. Brand owners can protect their portfolios by filing for unreported trademarks and expanding their goods and services in existing registrations.

This article was first published by the International Law Office, a premium online legal update service for major companies and law firms worldwide. Register for a free subscription.