Information of interest to All Owners of Canadian Trademarks

In light of some significant amendments to the Canadian Trade-marks Act that were passed into law on 19 June, owners of Canadian trademark registrations may wish to promptly renew their registrations. The recent amendments have reduced both the initial term available from new applications, and the renewal terms for existing registrations, from fifteen years to ten years. However, the amendments are not yet in force and are not expected to come into force for at least a couple of months. As a result, there is a time window (of uncertain duration), in which it is still possible to obtain a fifteen year renewal. Obtaining an extra five years in the renewal term may not be the only benefit to be derived from renewing before the amendments come into force. It is possible that the official renewal fees will also increase for some registrations. The change to the renewal term is merely an incidental part of the recent amendments to the Trade-marks Act. The amendments are primarily directed to enabling Canada to accede to some multilateral treaties relating to trademarks, one of which is known as the Nice Agreement. The Nice Agreement provides for an international class system for wares and services (currently comprising 34 classes of wares and 11 classes of services). Countries that have adopted the international class system generally calculate official fees (e.g., application filing fees, extension fees, renewal fees etc.) on a per-class basis. By contrast, until now, Canada’s official fees have been calculated on a per trademark basis; that is, the official fees have been the same no matter how many different types of wares and/or services are listed in an application or registration. It is clear that Canada intends to implement the international class system, but we do not yet have any information on when and how the class system will be implemented (other than a provision in the amendments making the Registrar of Trademarks the final arbiter in the assignment of classes). It seems reasonably likely that Canada will switch to a per-class basis for calculating official fees as part of the implementation of the international class system. Thus, once the international class system has been implemented, the official renewal fees for registrations that the Trade-marks Office deems to cover more than one class of wares and/or services, may be higher than they would have been under the current basis for calculating official fees. To be clear, a Canadian trademark registration may be renewed at any time prior to the end of then-current term. Thus, even a recently obtained registration may be renewed.