Introduction

Canadian trademark law will be overhauled on 17 June 2019, with many significant changes – both procedural and substantive – coming into effect (for further details please see "The date is set – new trademark law will be in force in June 2019"). This article discusses the important strategies to consider before Canadian trademark law changes, including tips that could save time and money, now and in future.

Filing fees will rise dramatically for multi-class applications

Canada does not currently have a mandatory classification system. The government fee to file a trademark application is C$250 whether the application lists one class or all 45 classes. In addition, the Canadian dollar is roughly equivalent to US$0.75 or €0.66, which provides a natural discount for foreign applicants.

However, when the law changes, a fee per class will be introduced. Under the new law, the government filing fee will be C$330 for the first class and C$100 for each additional class. Accordingly, for an application listing goods and services in all 45 classes, the government filing fee will increase from C$250 to C$4,730 on 17 June 2019.

Tip  To save money, brand owners should consider filing applications to register their marks now, before the new law comes into effect.

Requirement for declaration of use is being eliminated

Under the new law, it will be unnecessary to file a declaration of use. As a result, applications filed between now and 17 June 2019 will be relatively cheap and can lead to registrations without the need to file a declaration of use or any specimens.

Tip If brand owners have existing trademark applications or registrations, they may consider filing new applications for additional goods and services that may not currently be for sale.

With these two important changes to Canadian trademark law coming soon, there is clearly a strong incentive to file multi-class applications before the law changes on 17 June 2019.

For further information on this topic please contact Philip Lapin at Smart & Biggar/Fetherstonhaugh by telephone (+1 613 232 2486) or email (plapin@smart-biggar.ca). The Smart & Biggar/Fetherstonhaugh website can be accessed at www.smart-biggar.ca.

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.