On 17 June 2019, Canada’s trade mark law will be overhauled.
One of the biggest changes is the adoption of the Nice Classification – an international classification system of goods and services. Up to now, Canada has not used any classification system when filing trade marks, which allowed owners to register their marks across a wide range of goods and services with one single payment of a government fee. The result? Trade mark registration in Canada, for a wide range of goods and services was relatively cheap in comparison with other countries.
The changes from 17 June will impact owners of trade mark registrations, as well as those seeking to register new or existing trade marks, by requiring them to nominate the relevant class(es) of goods and services to be covered and pay the government fees per class. These changes will come with a dramatic increase in costs for filing new applications where more than one class of goods or services is required.
How do the changes impact renewal costs?
When the law changes in June, a government fee per class must be paid upon renewing an existing trade mark registration, and additionally it will be necessary to classify goods and services of existing trade mark registrations before they can be renewed, resulting in a two-step renewal process. Presently, a single government fee is payable when renewing a registration, so as we discussed with filing, this change will also increase costs in order to maintain trade mark registration.
In relation to renewal deadlines, under current law, any Canadian trade mark registration can be renewed prior to 17 June 2019, regardless of the renewal deadline. Hence even if the renewal deadline is two or nine years away, registration can still be renewed today. After the changes take effect, the term for registration and renewal will change from 15 years to 10 years to bring Canada in line with most other jurisdictions. So if the current term expires on or after 17 June 2019, the renewed term of duration will be 10 years, regardless of when payment is made.
So what should you do?
In light of these upcoming changes, and to save significantly on costs, trade mark owners should –
- Consider filing applications to register their trade marks in Canada before 17 June 2019;
- If a trade mark owner already has an existing registration in Canada, it is prudent to consider the scope of the registration to see if additional goods or services should be protected and, if so, to file fresh applications to cover those goods or services before 17 June 2019;
- Consider renewing all existing Canadian trade mark registrations before 17 June 2019.