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 To listen to an archived version of the webinar click here.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:

  1. 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