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Three steps to take before the new Trademarks Act comes into effect in Canada

Canada has announced that the amendments to the Trademarks Act (see our article of December 20, 2018 It’s official! – The new Canadian Trade-marks Act will come into effect on June 17, 2019: What should you do to prepare? for more details) would finally come into effect on June 17, 2019.

These include:

– Increase of the official fees for the filing of an application for registration and the renewal of existing registrations

– Obligation to classify all goods and services in accordance with the Nice International Classification System

– Abolition of filing grounds and declarations of use

Below, we present some tips and practical considerations to be implemented before June 13, 2019 to help you maximize opportunities, benefit from some savings and prepare for new realities.

1. Renew registrations

Trademark owners should revise the renewal dates of all their registrations and consider renewing registrations of interest before June 17, 2019, particularly if these registrations contain a large number of classes.

This would avoid higher renewal fees and postpone the obligation to classify the goods and services contained in their registrations.

Currently, government fees to renew a registration are $ 350 regardless of the number of classes. After June 17, 2019, government renewal fees will increase to $ 400 for first class and $ 125 for each additional class.

In addition, trademark owners can benefit from this strategy, regardless of the expiration date of their registrations. Indeed, currently, there is no limit as to the time of renewal of the registrations since registrations can be renewed at any time before their expiration (whatever their renewal date) and without the need to classify the goods and services.

Therefore, it would be advantageous to benefit from an early renewal before the entry into force of the new law.

2. File multi-class applications

Currently, government fees for filing a trademark application are $ 250 regardless of the number of classes. After June 17, 2019, government fees for filing an application for registration will increase to $ 330 for first class and $ 100 for each additional class.

Consequently, since significant savings can be achieved by applying for multiple classes applications now, it is recommended that you consider filing trademark applications before the new law comes into force.

3. Proceed to the registration of allowed applications

By registering applications that have already reached the stage of allowance, you will be able to benefit from the 15-year registration term rather than the new 10-year period. However, you will still need to file a declaration of use if the application was filed solely on the basis of intended use in Canada.

However, in the case of an application based solely on intended use, if the use of the mark has not yet begun in Canada with all the goods and services covered by the application, it would be advisable to wait after June 17, 2019 to complete registration. Indeed, after this date, it will no longer be necessary to file a declaration of use to obtain the registration and it will thus be possible to obtain more extensive and easier registrations even if their duration will be 10 years instead of 15 years.

As these important changes to the Trademarks Act are fast approaching, it is advisable to file applications or renew registrations covering several categories of goods and services without any delay.

If you have any questions, please contact your professional at Brouillette well before the closing of the Canadian Trademarks Office on June 13, 2019.

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