Effective June 17, 2019 the new Canadian Trademarks Act will be coming into force resulting in substantive changes with potential cost consequences and a reduction of the registration term. The Canadian online system will be inaccessible June 14 to June 16, 2019.

Renewal of Existing Registration Before June 17, 2019 Government Fee Increase

The renewal cost of trademark registrations will increase.

Between now and June 16, 2019, the government fee to renew a registration online is CDN$350.00. After June 17, 2019, the government fee will increase to CDN$400.00 for the first class of goods/services plus CDN$125.00 for each additional class of goods/services (although you will be able to delete classes before renewal).

Under the current law, any Canadian trademark registration can be renewed prior to June 17, 2019 at the old fee, even if the trademark is not due for renewal for another 15 years. If the due date of the renewal falls before June 17, 2019, the owner will be given a renewal term of 15 years. Under the new law, if the due date of the renewal falls on or after June 17, 2019, the term will be 10 years. As of June 17, 2019, renewal will only be permitted within the period of 6 months before or after the deadline.

File Before June 17, 2019 for Trademark Applications with three or more classes of goods/services

Before June 17, 2019 the government trademark application fees are a filing fee of $250 plus a $200 registration fee. As of June 17, 2019, there will only be a government filing fee, but it will be $330 plus $100 for each additional class of goods/services. As such, the government’s trademark fees will be more costly for trademark applications with three or more classes as demonstrated by the following chart:

Total Government Fees Now       As of June 17, 2019

One Class                   $450                                    $330

Two Classes                $450                                    $430

Three Classes              $450                                    $530

Four Classes                $450                                    $630

Term of Registration

The term of registration will change from 15 year to 10 years, so allowed trademark applications should, if possible, be registered before June 17, 2019.

Declaration of Use

The requirement to file a Declaration of Use will be eliminated as of June 17, 2019.

Nice Classification

Nice classification means that goods and services are identified with a “class”, for example, class 10 for medical devices and class 35 for business management consultancy.

Nice classification is required as of June 17,2019:

  • before an application will be advertised;
  • for a registration to be renewed;
  • for an application not allowed before June 17, 2019 to be registered; and
  • in response to a notice from the Trademarks Office.

If a Canadian registration will be used as the basis for an international application under the Madrid protocol, if the goods/services are not already classed, a voluntary Nice classification should be submitted.

Madrid Protocol

The Madrid Protocol allows trademark owners to file a single application for international registration with the World Intellectual Property Office (“WIPO”) and designate countries (which are members of the Madrid Protocol) in which protection is sought.

As of June 17, 2019 Canadians will be able to file for international registration and foreign parties will be able to designate Canada through the Madrid Protocol. For Canadians, the Canadian Intellectual Property Office will receive and certify an application for the international registration of a trademark.