August 28, 2019

Canada implemented amended trademark legislation and fees

As of June 17, 2019, Canada implemented a new Trademark Act, signifying the modernisation of the Canadian trademark system. The Act entered into effect on the same day as the country’s accession to the Madrid Protocol, the Nice Agreement and the Singapore Treaty and incorporates the necessary amendments for the national legislation to cooperate effectively with the aforementioned treaties.

The most prevalent amendments to the trademark law include the validity term of a trademark, which now constitutes ten years as opposed to the previous term of fifteen years, as well as the abolishment of registration fees. In addition, renewal requests may now only be made within a six-month period before or after the renewal deadline, constituting a total of twelve months to request renewal. Prior to the implementation of the Act, renewals could be requested at any time. The fee for renewal in one class will now be CAD 400, whilst the fee for each additional class will be CAD 125.

Significant changes have also been made to the filing process. As per the new Act, filing fees will now be charged per class, with the fees set at CAD 330 for the first class and additional classes each set at CAD 100. Previously, a single filing fee of CAD 250 was payable for a multi-class application. Additionally, the requirement of prior use has been eliminated as a prerequisite for registration. The requirement of graphical representation has been removed, allowing applicants to utilise sound, texture, holograms, 3D models and other methods of representation.

Furthermore, classification of goods and services in line with the Nice Classification for new applications as well as renewals of already registered trademarks is obligatory as of June 17, 2019. As per Canada’s accession to the Madrid Protocol, international registrations may now be launched through a single application made to the WIPO as opposed to the previous process of filing individual applications in several jurisdictions. This is beneficial to both Canadian applicants seeking worldwide protection for their trademarks, and foreign applicants seeking trademark registration in Canada through the Madrid Protocol.

The new Act is set to be effective in harmonising Canadian national law with the international treaties it has recently become a party to and to benefit applicants and trademark rights holders alike.

Author: Danielle Carvey