June 17th has been a key date in trade mark law for any clients seeking to register their trade mark in Canada, as there have been significant updates to the Canadian Trade Marks act being implemented from this date. The changes have been long in the making being first propose in 2014’s Through Bill C-31, The Economic Action Plan Act, and finalised in 2018’s Canada gazette, with BKIP following every step to ensure we are fully prepared to assist you in getting the strongest possible protection for your business.
The first and one of the most important issues regarding the Canadian trade mark changes are a change in government fees. At present, there are charges of $250 CAD registration fee, regardless of the amount of classes, and then a subsequent $200 registration fee for successful applications.
The new changes will bring the price to $330 CAD for the application including one classification, and then a subsequent $100 CAD for each additional class. The new fees are good news for prospective trade mark owners who require one or two classes of goods, but do not work out as well for those with three or more.
Currently a trade mark in Canada is in force for 15 years before renewal is required, but moving towards the international standard, the period a trade mark is in force will be shortened to 10 years. A renewal will cost $400 CAD for the first class, and a subsequent $125 CAD for each additional class.
A key point to note for those already with an existing trade mark which requires renewal is that a trade mark will now only be eligible for renewal if it follows the Nice classification list.
At present, an applicant for a Canadian trade mark is required to provide the “use” of the trade mark, whether this is based on use in Canada, intent to use in Canada, and registered or applied abroad. The new legislation discards this requirement meaning anyone can file a trade mark in Canada regardless if they intend to use or not. There have been fears that this will result in trade mark “squatters” and “pirates”. In reality, these fears are unfounded, as a trade mark which is registered, and hasn’t been used and there is no evidence it will be used in the future would be relatively simple for an applicant to revoke if a third party was “squatting” on a trade mark they need.
At present during applications, descriptions for goods and services only had to be written in “ordinary commercial terms”, however from June onwards, Canada will follow the Nice Classification system where goods and services are grouped into any of the 45 classifications. As part of the application process, BKIP has over 20 years experience with the Nice system, so will be able to expertly offer you the correct advice into which classes you require.
An important tool for those business trading internationally and requiring trade marks around the world, is Canada is joining the Madrid Protocol. Based on a home application, the Madrid protocol allows for an easy and cost effective centralised system, where a home application is designated to any members countries that trade mark protection is required in. Canada is now included in this, and will no longer need to be applied for separately.
At present, during examination a trade mark application is generally not searched at for distinctiveness, and is only raised by a third party. However, with the upcoming changes, an application can be refused by an examiner if they do not believe it is inherently distinctive.
With offices in America, Europe and Asia, BKIP is perfectly placed to assist you with your Canadian trade mark application, or any other international trade mark you are seeking. Contact us today for our free initial trade mark advice.