Apply for trademarks now to save money?

Canada has made significant changes to the Trademarks Act, mostly to make it more consistent with international practice. Anyone considering applying for a trademark might want to file before the new rules come into force.

What is the issue?

In early 2019 the trademark application process will undergo significant changes. The changes include:

  • Not having to state first use dates or declare actual use
  • Registration term reduced from the current 15 years to 10
  • Adoption of the class system and a class based fee structure
  • Proof of distinctiveness needed for some types of marks

Why does it matter?

CIPO fees are now $450 per application no matter how many classes of goods and services are listed. The new fees will be $330 for the first class, plus $100 for each additional class. So any more than 2 classes will cost more. It is not unusual, depending on the nature of the goods and services, and whether include promotional items are included (eg if you sell hats or t-shirts that have your brand on it) to have several classes. Add to that the effective increase caused by getting only 10 years of protection vs 15. It is not clear yet how the proof of distinctiveness will work in practice, other than it will take more time and effort when required.

What to do about it

Businesses should ponder their trademark situation over the coming months and whether they might want to file for new marks or expanded uses at some point.   If so, they might save some money by applying before the new rules take effect.

Cross-posted to Slaw

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