Original Newsletter(s) this article was published in: Blaneys on Business: May 2019

On June 17, 2019, Canada’s much anticipated amendments to the Trademarks Act will come into force. These changes extend to various areas, including the renewal of registrations. One such change is the requirement for goods and services to be classified according to the Nice classification system that contains 45 classes of goods and services. Another such change is an increase of government renewal fees from the current fee of CAD$350 (if renewal is requested online) regardless of the number of classes of goods and services. Under the new regime, the renewal fee for a trademark registration will be CAD$400 for the first class of goods/services and CAD$125 for each additional class. Registrations covering multiple classes will therefore be significantly impacted by the new fee structure.

Canada’s current trademark regime allows any existing trademark registrations to be renewed prior to June 17, 2019.* Owners of Canadian registered trademarks therefore can potentially reduce government renewal fees if renewals are requested and processed before June 17, 2019. Renewals can be requested online and certificates of renewal can be issued electronically within one business day upon receipt of an online renewal request.

We set out below various scenarios regarding the timing of making a renewal request and relevant government renewal fees and renewal term.

When

Renewal

Registration Expiry Date

Renewal Request

Government Online Fees

(CAD$)

Renewal Term

(Years)

Before June 17, 2019

 

Requested before expiry and processed before June 17, 2019

350 (covering all registered classes)

 

15

 

Requested within the 6-month grace period after June 17, 2109

On or After June 17, 2019

 

Requested and processed before June 17, 2019

350 (covering all registered classes)

10

 

Requested on or after June 17, 2019

400 for the first class + 125 for each additional class

Our Recommendation:

Renew your registered Canadian marks that are active before June 17, 2019 to take advantage of the flat government renewal fee. As a renewal request must be processed by the Trademarks Office before June 17, 2019, requesting renewal should be initiated sufficiently in advance of such date.

*After June 17, 2019, a renewal request can only be made between 6 months before and 6 months after the registration expiry.