The following is part of Bereskin & Parr’s “Trademark Transition” series, and follows up on a webinar broadcast by Bereskin & Parr LLP on February 7, 2018. To listen to an archived version of the webinar click here.
With changes now appearing to be one year away, we recommend:
- To Audit your trademark use now:
- Consider, what marks, what goods and what services?
- Compare to your current registrations and identify gaps
- File to address those gaps
2. File now:
- To take advantage of the current favourable fee structure
- To protect common law rights and defend against poaching
- For certain non-traditional marks (e.g., names, numbers), and to avoid distinctiveness evidence requirement
3. Strategize on your current application portfolio, with the approaching in force date in mind:
- What applications are allowed?
- Are extensions available until the in force date?
- If extensions are not available, consider refiling now
4. Renew in 2018 to avoid incoming per class fee structure:
- Consider that the term might be clawed back to ten years
- There would appear to be no mechanism to allow the Trademarks Office to ask for additional per class fees once renewed
5. Maintain “use” in Canada records:
Develop use record retention protocols
- to defend against non-use cancellation proceedings, and
- to be in a position to assert your registrations and common law rights