Apply for Trademarks Before the Law Changes

Canada has made significant changes to the Trademarks Act, mostly to make it more consistent with international practice. It was just announced that the changes will take effect June 17, 2019. Anyone considering applying for a trademark might think about filing before then.

What is the issue?

On June 17, 2019 the trademark application process will undergo significant changes. The changes include:

Not having to state first use dates or declare actual use

Registration term reduced from 15 years to 10

Adoption of the class system and a class based fee structure

Proof of distinctiveness needed for some types of marks

Why does it matter?

CIPO fees are now $450 per application no matter how many classes of goods and services are listed. The new fees will be $330 for the first class, plus $100 for each additional class. So any more than 2 classes will cost more. It is not unusual, depending on the nature of the goods and services, and whether promotional items are included (eg if you sell hats or t-shirts that have your brand on it) to have several classes. Per class fees will apply to renewals as well. Marks requiring proof of distinctiveness will take more time and effort, and may not even be registrable.

What to do about it

Businesses should ponder their trademark situation over the coming months and whether they might want to file for new marks or expanded uses. If so, it might be better to apply before the new rules take effect. And if they have existing marks that are up for renewal after June 17, consider renewing before then.