New Trademark System in Canada
As many of you are aware, a new trademark system is going to come into force in Canada wherein, among other major changes, use of the mark in Canada or a declaration of use for a trademark based on intent to use in Canada will not be required for pending applications based on intent to use in Canada to achieve registration. However the Canadian office has not yet committed to an actual coming-into-force date other than stating that it will be sometime in 2019 according to the latest information available.
In this regard, the projected implementation of the new Act and Regulations has been forwarded several times. Its original anticipated implementation was 2015. There is therefore absolutely no certainty about the projected 2019 at this time, since, as mentioned above, this continues to be an anticipated deadline, and not an official one. Among other changes, there will be a mechanism for divisional applications, the term of the renewal is also being reduced from 15 to 10 years, and the NICE classification system will be mandatory. In this regard, while Canada has not fully adopted the NICE system, CIPO started accepting NICE classification information since September 28, 2015 , and has since been aggressively requesting to sort goods and services according to NICE in anticipation of its full implementation. We are also receiving courtesy letters inviting us to sort the goods and services according to NICE in prior registrations, which we report on a case-by-cases basis.
The proposed new electronic official filing fees according to information currently available on the CIPO web site, will be $330 for the first class and an extra $100 official fee for each additional class. There will be no separate registration fee. The proposed electronic renewal official fees for first class are $400 with $125 extra per class. There will be surcharges for paper filings. Again, all these fees are still under consultation, and our own professional fees will be harmonized with these.
Many practice notices and other official announcements will come as soon as there is greater certainty with the coming-into-force of the new regime. In the meantime, we will definitely inform our clients of the options available to them once CIPO actually announces and commits to a coming-into-force date.
Please do not hesitate to contact us should you have questions or concerns about matters currently under prosecution or upcoming trademark renewals.