Canada has finally joined the 21st century and is aligning its trademark registration system with the rest of the world. New Trademark Regulations come into force on June 17, 2019 and they are bringing huge changes to the existing system.
If you have been wanting to register a trademark but haven’t gotten around to it yet or if you have an existing mark, you need to understand what these changes mean for your business because like most rapid changes, these are a little painful.
Here are the top 5 things you need to know about the new Trademark registration system.
1. Exporters Rejoice
First the good news! The new registration system will align Canadian trademark law with our major international trading partners including the U.S and the European Union. This alignment will make it easier for Canadian businesses to protect their trademarks internationally and to expand beyond the Great White North.
Current system: you need to first apply in Canada and then internationally. At least two applications are necessary and two sets of filing fees.
New system: you file a single application and pay one set of fees to apply for protection in all the Madrid protocol countries (nearly 100 countries).
2. Trademark Squatters Rejoice
Now for the not so great news. Come June 17, filing grounds will be eliminated, making way for trademark squatting.
Current system: when you apply to register a trademark, you have to indicate whether the application is based on prior or proposed use in Canada or use and registration in another country. This means you already have to be using the mark or planning to use it in the near future.
New system: there will be no opportunity to indicate grounds for filing the application. That means anyone will be able to file a trademark application, whether they plan to use it or not. If you’re thinking that sounds like what happened in the initial stages of the internet where people bought domain names that had nothing to do with them for pennies and sold them to desperate companies for mega bucks, you are absolutely right.
There has been a massive surge in applications over the past year as companies scramble to secure protection for marks that are essential to their business and to avoid losing their intellectual property to squatters. If you’d like to figure out if your business is at risk, please schedule a consultation with us.
3. Less standing out, more fitting in
Current system: applicants are encouraged to use the Nice Classification system but if there’s no existing category that describes your service or good, you can make your own
New system: because the new registration process has to comply with international standards, all goods and services will have to be classified in accordance with the Nice Classification system.
If your product is really innovative or perhaps a little woo-woo and it’s difficult to fit into an existing class, you’re out of luck, you’ll have to make it fit.
4. Shorter Period of Protection
Current system: your trademark is protected for 15 years from the date of registration and there is a fee of $350 to renew.
New system: your trademark is only protected for 10 years from the date of registration and renewal fees are $400 for the first class of goods and $125 for each other class. Registrations will only be renewed if they fully adhere to the Nice Classification system.
If your existing mark will expire after June 17, you may want to consider renewing early before there are fees for each class. CIPO (the Canadian Intellectual Property Office) has been waiving the renewal fees to encourage registrants to renew early.
5. More money, more problems
Current system: CIPO charges $250 for filing an application online and $200 for the registration, regardless of the number of classes of goods and services you seek protection in.
New system: The application fee will be $330 for the first class and $100 for each additional class. As you can easily get to 3 or 4 classes per application, you can easily see how this increase could add up.
Lawyers’ fees will also likely increase as the process becomes more complicated.
Your trademark is an important part of your business assets. Schedule a consultation with us to learn how you can best protect it before it becomes more difficult and expensive to do so.