Smart & BiggarIn this two-part series, we will discuss important strategies to consider before Canadian trademark law changes on June 17, 2019, including tips that could save you and your clients time and money, now and in the future.

As recently reported, Canadian trademark law will be overhauled on June 17, 2019 with many significant changes, both procedural and substantive, coming into effect.

FILING FEES WILL RISE DRAMATICALLY FOR MULTI-CLASS APPLICATIONS

Today, Canada does not have a mandatory classification system. The government fee to file a trademark application is $250 CAD whether the application lists one class or all 45 classes. In addition, the Canadian dollar is roughly equivalent to 0.75 USD/0.66 EUR, which provides a natural discount for foreign applicants.

However, when the law changes, there will be a fee per class introduced. Under the new law, the government filing fee will be $330 CAD for the first class and $100 CAD for each additional class. Accordingly, for an application listing goods and services in all 45 classes, the government filing fee will increase from $250 CAD today, to $4,730 CAD on June 17.

TIP: To save money, brand owners should consider filing applications to register their marks now, before the new law comes into effect.

REQUIREMENT FOR DECLARATION OF USE IS BEING ELIMINATED

Moreover, under the new law, it will no longer be necessary to file a declaration of use. As a result, applications filed between now and June 17 are relatively cheap and can lead to registrations without the need to file a declaration of use or any specimens.

TIP: If brand owners have existing trademark applications or registrations, they might consider filing new applications for additional goods and/or services that might not currently be for sale.

With these two important changes to Canadian trademark law coming very soon, there is clearly a strong incentive to file multi-class applications now, before the law changes on June 17, 2019.

×