In late 2015 or early 2016, significant changes will occur in Canada under the Canadian Trade-Marks Act. Entities holding a Canadian trademark registration that has a renewal date close to this time period will face issues regarding the renewal term period and potential fee increases.
Under the current provisions of the Canadian Trade-Marks Act, registrations are valid for a period for 15 years. The Canadian Trademark Office has indicated that registrations having a renewal date before the change will renew for a period of 15 years. Registrations with a renewal date after the change will have 10-year terms. In that the exact date of the change is not yet known, any Canadian trademark registration having a renewal date from about September 2015 to about April 2016 could have either a 15-year or 10-year renewal period, depending on when the change is enacted.
In addition, currently, a trademark application in Canada covers all goods and services under a single filing fee. With the change, Canada will adopt the Nice Classification System, the international standard that classifies goods and services into 45 separate classes, and will most likely require a “per class” fee where registrations cover multiple classes of goods and services. Likewise, any registration having a renewal date between September 2015 and April 2016 could incur a fee of $250 CAN or much more than that, depending on the number of classes.
Though the exact impact of the proposed law is still uncertain as to its effect on existing registrations, companies planning new mark applications in Canada should consider filing as soon as possible to take advantage of the current 15-year renewal term period and to avoid the potential increase in fees.