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As has been well reported both here and across the Internet, Canada has recently passed significant changes to both its patent and trademark laws that will likely come into full effect sometime in late 2017 or early 2018.

From the trademarks perspective, these changes are highly substantive in nature and will effect significant changes to the way registered trademarks are obtained and maintained in Canada.

For example, a trademark will no longer need to have been used in commerce before an applicant is entitled to obtain registration of that trademark. Moreover, goods and services will soon be required to be listed pursuant to the appropriate international “Nice” classification, among a number of other changes that are designed to bring the Canadian regime in line with international practices.

However, a potentially overlooked aspect of these changes is that the process of obtaining trademark registrations in Canada is soon to become more expensive. For example, in the interest of harmonizing this process with the Madrid protocol for international trademarks, the registration fee will become payable along with the government filing fee at the time of filing, rather than once the application is allowed.

This will increase up-front costs by more than $200. It will also encourage increased scrutiny for trademark filings where the eventual registrability of the trademark is at least somewhat in question, given the applicant’s increased sunk costs at the outset of the application process.

But wait, there’s more! This new hybrid government filing/registration fee includes a single international class – similar to many, if not most, other international jurisdictions. Accordingly, applications filed in a number of classes will be subject to a $100 fee for each additional class included in the application. This will certainly give pause to those applicants who are in the practice of filing broad applications directed to both current and potential goods and services offered in Canada.

Finally, not only will renewed trademark applications be subject to increased renewal fees on a per class basis as identified above, the trademark will also be renewed for a shorter 10-year period, increasing the applicant’s overall maintenance costs in the long run.

The good news? Applicants can take advantage of today’s lower rates in a number of ways. First, trademarks that will soon be up for renewal can be attended to now before these changes take effect – resulting in a longer term of renewed protection (15 years rather than 10 years) at the current, significantly reduced renewal rates.

Second, it is advisable to immediately file any trademark applications that have been under consideration for a period of time in order to take advantage of the current rates. This could particularly be the case where a trademark owner has been considering expanding the scope of protection associated with its registered trademarks relating to its core brands, or cases where a trademark owner is considering completely new trademark filings for brands that have not yet been put into the marketplace in Canada.

In short, trademark owners may want to seriously consider taking advantage of the Canadian government’s limited time deal on trademark applications and renewals before it’s too late!

To read more about registering trademarks in Canada, take a look at our previous blog post.

This content is not intended to provide legal advice or opinion as neither can be given without reference to specific events and situations. © 2021 Nelligan O’Brien Payne LLP.

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