As of June 17, 2019, a number of changes to the Trademarks Act will come into effect that could significantly affect businesses across Canada.
It is important that anybody filing new trademarks, or renewing existing ones, in the near future be aware of the potential impact and implications of these coming changes:
- The Act will allow trademarks to be registered prior to their use and will not require a date of use to be included with the application. With this amendment comes the risk of trademark "squatting," where applicants register trademarks with no intention for use.
- Trademark applicants will be required to classify goods and services according to the Nice Classification System. Currently, classification is voluntary.
- The new Act will permit new types of trademarks to be registered, such as scents, tastes, textures, holograms, and moving images.
- Canada will be joining the Madrid Protocol, which will allow applicants to file trademarks through one application with a single fee for multiple jurisdictions, saving businesses from filing in each country.
- Under the new Act, the term of trademark protection and renewals will be reduced from 15 years to 10 years. The 15-year term will still apply to any trademarks renewed before June 17, 2019.
- The basic application fee will increase from $200 to $330, with an additional $100 fee per class of goods and services. Currently, there is a flat $250 registration fee regardless of the number of classes.
- The trademark renewal fee ill increase from $350 to $400 for the first class, with an additional $125 fee per additional class. Currently, there is no additional fees for more classes.
It is recommended to file or renew trademarks before the enforcement date of these changes. In addition to saving on fees, busineses can take advantage of the longer protection term and avoid the issue of trademark squatting.
For more details about the new Trademarks Act, see "Amendments to the Trade-marks Act Will Come into Force on June 17, 2019 – Are You and Your Business Ready?" by Christopher Heer, Toba Cooper and Daryna Kutsyna of Heer Law.
Contact a CapriCMW Risk Advisor for information and resources on business insurance and risk management.