Sharon Varney, Senior Manager, Corporate Services
After a five-year delay, Canada’s new trademark laws take effect on June 17, 2019. The legislation contains long-awaited amendments to modernize the trademark landscape in Canada and bring it in-line with international treaties, namely the Madrid protocol.
The following are some of the key changes coming into force (“CIF”):
Registrations - Trademark registrations filed after the CIF date will be valid for 10 years, reduced from the previous 15-year period. Renewals will only be permissible within a six-month window, prior to and after renewal deadline date.
Applications - A simplified application process will eliminate the registrant’s responsibility to specify a basis for filing, (i.e. date of first use or proposed use) or execute a ‘Proof of Use’ declaration prior to registration, in the case of the latter.
Fees - The filing fee will shift from the current rate of $250 for all goods and services outlined in the trademark application, to fees charged on a ‘per-class’ basis. The rate for the first classification will be $330, and $100 per each additional class. Renewal fees will increase to $400 for the first class and an additional $125 for every class thereafter. The $200 registration fee will be eliminated.
Non-traditional trademarks - Registration will open for non-traditional items such as sound, texture, scents, shape, three dimensional objects, etc. The special sauce you enjoy on a Big Mac sandwich or the iconic rumble of a Harley Davidson motorcycle may become future registered assets of intellectual property. Of course, the Canadian Intellectual Property Office (“CIPO”) will require the registrant to prove such items are distinctive by supplying sound evidence of extensive use and promotion in the marketplace.
International applications - Canada will adopt the Madrid Protocol, a centralized system for registering and managing trademarks worldwide, allowing for a streamlined and cost-effective process for filing trademark applications through the World Intellectual Property Association (“WIPO”) for protection in up to 120 jurisdictions.
In addition to the changes outlined above, amendments will also be made to the technical requirements of the Act, examination protocols, opposition proceedings and other aspects of trademark management and enforcement.
Credit unions may benefit from the upcoming changes by:
- Taking action to renew any trademark registration(s) in advance of the June 17, 2019 deadline, to maintain the current 15-year period.
- Filing any trademark registration(s) under consideration to:
- Avoid delays by the influx of registrations resulting from international applications.
- Evade trademark squatters who aim to profit from the elimination of the ‘basis for filing’ requirement by selling or licensing their trademark(s) to businesses that use those marks.
- Bypass the “per class” fee(s).
- Maintaining proof of use records (i.e. samples and collateral) to protect your trademark(s) from cancellation due to non-use.
- Enlisting a watch service to monitor the marketplace for trademark infringement and foster brand protection.
- Engaging legal counsel for additional guidance with the changes.