Founding Partner
The Canadian Intellectual Property Office (CIPO) recently released a draft of Regulations that will support the new Trademark Act, expected to come into effect in the early months of 2019. The new Regulations lay out a series of time frames, procedures, and processes for the filing and prosecution of Canadian trademark applications. The proposed Regulations combine Canadian Regulations with Common Regulations from the Madrid Protocol while simultaneously adhering to both the Singapore Treaty and NICE Agreement. These changes will be instrumental in aligning Canada’s trademark laws with the laws of its international trading partners, making it easier for Canadians and their businesses to protect their trademarks abroad and vice versa.
Some of the changes include:
1. International Applications
a. This will permit Canadians to obtain international registration of their mark pursuant to the Madrid Protocol.
b. This will be far more efficient and cost effective.
2. Opposition and Cancellation Proceedings
a. This will allow parties to file evidence electronically.
b. Parties will be responsible for filing their respective documents, including cross-examination documents and responses to undertakings.
3. Fees
a. Trademark application filing fee will increase from $250/class to $330 for the first class and $100 each additional class of goods/services.
b. $200 registration fee will be removed.
c. The renewal fee will increase from $350/class to $400 for the first class and $125/each additional class of goods/services.
4. Registration Term and Renewals
a. Registration terms will be reduced from 15 to 10 years.
b. Renewals will only be permitted 6 months prior to or 6 months after the renewal date.
c. Registrations that came into existence prior to the amended Trademark Act will be awarded 15 years protection.
5. Filing and Prosecution Process and Requirements
a. There will no longer be a requirement to file dates of first use or a declaration of use.
b. New applications and existing applications will be required to comply with the NICE classification system, existing applications will have to amend their goods and services within six months of receipt of a CIPO notice.
c. Lastly, it will be possible to move forward with approved goods and services (into the publication phase) while putting a hold on the goods and services under dispute.
The goal is to align Canada’s businesses with those of its international trading partners and to make it easier and more affordable to file an application with international protection.
So should you wait to file your trademark in Canada? Not if your business is ready to go! It’s always better to search the trademark database and file before you start developing packaging and launching your marketing efforts. No one wants that dreaded letter 6 months into their sales cycle asking them to change their product branding because of an infringement on someone else’s trademark.
Questions and comments regarding the draft Trademark Regulations may be sent to CIPO via email at ic.contact-contact.ic@canada.ca, indicating “Trademark Regulations” in the subject line.