The Canadian Trade-marks Act will undergo substantial changes, many due to take effect on June 17 of this year. These changes will have a significant impact on the Canadian trademarks system. If your business currently owns a registered trademark, or is planning to register one soon, it is vital to learn about these changes. Below are four things to consider now in advance of the changes coming into effect.
1. Save on fees:
- File new applications now to take advantage of the current flat filing fee and avoid having to pay the per class fees that will come into effect on June 17, 2019.
- Renew your registrations now to take advantage of the current flat renewal fee and avoid having to pay the per class fees that will come into effect on June 17, 2019. There is currently no limit on how far in advance you can renew your registrations.
2. Protect your marks from trolls and obtain the broadest protection possible by filing new applications for your unprotected trademarks, and by expanding the goods and services in your current registrations.
3. Pay attention to your allowed applications:
- For allowed applications based on use in Canada - pay the registration fee prior to the CIF date to obtain a 15 year renewal term. (If the registration fee is paid after the CIF date, you will receive only a 10 year renewal term.)
- For allowed applications based on proposed use that are now in use in Canada - submit the Declaration of Use and pay the registration fee prior to the CIF date to obtain a 15 year renewal term. (If the declaration of use and registration fee is submitted after the CIF date, you will receive only a 10 year renewal term.)
- For allowed applications based on proposed use that are stalled because your mark is not yet in use (and will not be in use prior to the CIF date) - if possible extend your deadline until after June 17, 2019. After this date, a Declaration of Use will no longer be required, and the application can be registered simply by paying the registration fee. (As it will be after the CIF date, the renewal term will be 10 years.)
4. Make plans to take advantage of the Madrid International Trademark System after the CIF date if you want to apply for trademark protection in multiple foreign jurisdictions (being mindful of priority filing deadlines).
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