Trademark Act changes: Hurry up or wait?
Significant changes are coming to the Trademark Act (Canada) as of June 17th, 2019. The question of whether to apply for a registration before then or not is for you to decide but first consider the following.
An application for registration of a trademark before June 17th could save you money. Currently, the fee for an application is $450. After June 17th, the online application fee will be $330 for the initial trademark class plus $100 for each additional class. If you plan on applying for multiple trademark classes prepare to pay more.
Another significant change is the elimination of the “declaration of use” requirement in the trademark registration application. Before June 17th, you can apply for a trademark without it currently being in use. This could provide an advantage over current or potential competition if your trademark concept has yet to be developed.
Also, a registration or renewal before June 17th will be grandfathered to a 15-year term instead of the newly reduced 10-year term. Also, registrations renewed after that date will need to be amended and reclassified under the Nice Classification system, the international classification system for goods and services.
However, it may be advantageous to wait until after June 17th to register your trademark. One advantage is that the application process has been streamlined. A single application now enables trademarks to be registered in more than 100 countries under the Madrid Protocol. The application is now quick and simple. Translations are not required and neither are powers of attorney. Also, since the application is now filed under the World Intellectual Property Organization, it is done in one language and there is only one fee to be paid. This can be a significant administrative advantage to those wishing to pursue global markets.
Another advantage is the broadening of the trademark definition to include “non-traditional” trademarks such as sounds, colour, scent, taste and texture; modes of packaging; and holograms, moving images and three-dimensional shapes. A brand can now be distinguished by such things that serves indicate its source. The inclusion of such “non-traditional” trademarks, coupled with the pursuit of global markets, can create new opportunities to develop and distinguish your particular brand.
Additionally, the application process has become more flexible. Issues can be corrected after the application is submitted without delaying the process. The application can be split to resolve or clarify submissions while allowing permitted applications to proceed. Once the split applications have been registered they can be combined into a single trademark registration.
Overall, the changes to the Trademark Act (Canada) are designed to benefit applicants in the long run. Distinguishing your brand on the global market is now easier and permitted portions of an application can proceed despite submission issues. Otherwise, the changes could create the necessary impetus to submit your application sooner rather than later while saving a few hundred dollars in the process.
This publication is meant to be a general overview of a few changes to the Trademark Act (Canada). Other changes that will come into force on June 17th may affect your particular circumstances. Please contact Cheadles Lawyers LLP if you require further legal advice.