With the June 17 "coming into force" date of the new Canadian Trademarks Act fast approaching, there are opportunities you can be taking advantage of NOW. Below, we highlight some practical tips and considerations to help you maximize the opportunities and prepare for the new realities.
Under the new Trademarks Act, filing fees and renewal fees will be charged on a per-class basis.
- File, or renew, multi-class applications NOW to avoid per-class filing and renewal fees.
- After June 17, create a renewal strategy that takes into consideration the fact that renewal fees will be charged on the basis of how many classes are listed at the time of renewal. Work with your Gowling WLG professional to ensure unwanted classes are deleted in advance.
Once the Madrid System is adopted, and with the use requirement eliminated as a prerequisite to registration, we expect Canada's trademark registrar to become significantly more crowded.
- To the extent possible, file applications NOW to avoid delays.
Stand your ground
Brand owners should expect a more competitive trademark landscape in Canada going forward. Having the proper protections in place, complemented by a solid enforcement strategy, will be critical.
- Subscribe to a trademark Watch Service.
- Keep solid records and samples of use in Canada.
- Take advantage of the "Notification of Third Party Rights" process that will be permitted after June 17, which allows parties to direct the Registrar's attention to prior rights of interest.
No use in waiting
- With the elimination of use as a prerequisite to registration, speak to your Gowling WLG professional about brand extension applications and defensive filings NOW.