On June 17, Canada's new Trademarks Act takes effect, marking a transformative shift in the country's intellectual property landscape.
Significantly, the new Act will find Canada joining the Madrid Protocol for the first time, as well as adopting Nice Classification – measures that will bring Canada's trademark regime into lockstep with the rest of the world.
For brand owners in Canada and abroad, these changes will give rise to fresh opportunity — as well as complex hurdles.
Gowling WLG's trademark team has been monitoring these developments closely and is poised to help brand owners navigate and respond meaningfully to the Act's provisions — and save money and time in the process.
On these pages, we highlight the key details of the new Trademark Act, and present some tips and insights to help you prepare accordingly.
Trademarks Act update: At a glance
|Multi-class applications pay only a single government filing fee of $250.||Government filing fees will be charged on a per class basis. $330 for the first class and $100 for additional classes.|
|Canadian brand owners must file international registrations separately in each jurisdiction.||Canadian brand owners can secure international registration with a single application via the Madrid System.|
|Proposed use applications can only issue to registration by filing a Declaration of Use.||No Declarations of Use required to obtain registration.|
|Registrations granted for 15-year terms.||Registrations granted for 10-year terms.|
|Third party correspondence not permitted during prosecution.||"Letter of Protest" can be directed to Examiner with respect to applications of interest.|
|Renewal requests can be filed any time.||Generally speaking, renewal requests will only be accepted six months before or after a renewal deadline.|
|Applications can move to registration without classification of goods and services.||Advertisement, registration and renewal can only be achieved once goods and services are classified.|