Canadian Trademark Law - Special Update

The Government of Canada announced that amendments to Canada’s trademark laws, including adherence to the Madrid Protocol, will come into force on June 17, 2019. New Trademark Regulations were also published.

In anticipation of the new laws, it would be prudent to consider or implement the following:

• Protect Brands by Filing Early. The new legislation removes the requirement that marks be used before registration. This is expected to increase incidents of trademark “trolling”. Filing early decreases this risk.
   
• File Applications for New Marks. The adoption of Nice Classification of goods and services will bring per-class fees resulting in higher filing costs. Therefore, consider filing new applications in Canada as soon as possible for new marks to save on government fees and secure rights against third parties. For now, multi-class applications are still available for a single government fee.
   
• Fill in Gaps. To protect marks of interest, consider whether current coverage in existing applications and registrations properly reflects all the marks of interest, covers all goods and services of interest, and covers the current presentation of the marks. Fill in gaps by filing new applications to cover all important marks and goods and services.
   
• Renew Existing Registrations Early. The term of registration will be shortened from 15 to 10 years and, like applications, fee-per-class will be introduced upon renewal. Therefore, consider renewing registrations due in 2019 early to save fees.