We are now well-into the new trademark regime in Canada! While the changeover has been a very busy time for us and other Canadian IP firms, we are settling into the new system after many webinars, information sessions and a flurry of practice notices issued on June 17th by CIPO.

As you may recall, the filing of a trademark has been simplified on one hand by not requiring a basis (such as use or intent to use) while classification of the goods and services is mandatory and the filing fees are also class-based. We also remind our clients that no declaration of use is required to finalize registration, and that the official registration fee is now rolled into the official filing fee.

One area that remains challenging is the obligation to classify any registrations that are being renewed. The registrations that are being renewed now have not been previously classified since voluntary classification was not available until late 2015.  Many of the current registrations require much thought to untangle the goods and services belonging to different classes, and some goods and services can belong to several classes. It is also taking several months for our classification requests to be processed. We are working very closely with our clients in this regard.

In other matters, we have yet to see the full effect of the new bases of refusal in examination.

Please let us know if you have any questions about the new regime or how it may affect your existing rights.