Canada’s trademark law is changing, and these changes will be coming into force on June 17, 2019. The sweeping changes which the new law will usher in are the most significant since the 1950’s. We therefore thought it was appropriate to take a deep dive into the new legislation, to briefly outline the main areas of change, and how trademark owners will be impacted.
Under the new Act, a trademark registration will be valid for 10 years, instead of the current 15 year period.
There will be now be a 12 month window to seek renewal of registrations. A registration can be renewed only during the six-month period before the renewal date and for six months after that date, or two months after the date of the notice for renewal is sent by the Registrar, whichever is longer. An extension of time will be available of no more than seven days following the expiration of the six-month period following the renewal date.
The new official fees for the renewal of trademark registrations are $400.00, plus $125.00 for each additional class. With respect to the payment of renewal fees for registrations where the Nice classification has not been finalized, the fee for the first class will be due within the prescribed renewal term. Any additional fees must be paid within two months after a notice has been sent that the Nice classification has been accepted. If the additional fees are not paid within the two month period, then the registration will be expunged.
If renewals of trademark registrations are requested after the coming into force date of June 17, 2019, where the renewal date expired before this date, the old renewal fee will apply to it, the renewal period will be 15 years and no Nice classification will be required. The registrant will later receive a Nice notification, and they will then have six months within which to comply with this requirement.
Where a registration expires after the coming into force date, but is renewed before the coming into force date, the old renewal fee will apply, compliance with the Nice classification is not required and a notice will later be issued requiring Nice compliance. The renewal term for such registrations will be for 10 years.
Where the renewal is requested after the coming into force date for the registration for a registration which expires after the coming into force date, the new renewal fee will apply, and the renewal fee renewal period will be for 10 years. For these registrations, the Nice classification will be required to be complied with before the registration will be renewed.