The Canadian Intellectual Property Office has released transitional provisions for applications at the various stages of the registration process when the new Act comes into force.  Some of these include: 

  • Applications that have not been advertised will be re-examined for determination of inherent distinctiveness.   If an application has been found to be not inherently distinctive, an applicant will be given the opportunity to file evidence that the mark was distinctive at time of filing the application.
  • Declarations of Use will no longer be required as all the filing bases will be eliminated from the new Act.
  • If your application has been advertised it will proceed to registration by simply submitting the $200 CAD registration fee.
  • If your application is allowed, similarly to applications that have been advertised, registration can be completed by submitting the registration fee.
  • The registration term will be determined by the date on which the registration fee is processed by the Trademarks Office.  If the registration fee is processed on or after the date the new Act comes into force the registration term will be 10 years.

 

Some of the key changes and the impact on trademark owners include:

  • Use of a mark will no longer be required to attain registration.  Filing bases will also be eliminated.  As details with respect to use of a mark will no longer be available on the official record this will give rise to more opposition proceeding and use investigations.
  • Canada will adopt the international classification of goods and services.  Official filing fees are anticipated to be $330 CAD for the first class and $100 CAD per each additional class.   
  • International applications will be possible.
  • The registration period will be reduced from 15 years to a 10 year term.
  • Under the new Act it will be possible to divide out an application.  This will be useful in overcoming examination refusals and oppositions.
  • The official renewal fee for a trademark registration will be $400 CAD for the first class plus $125 CAD for each additional class.
  • Letters of Protest (third party correspondence) will be permitted during prosecution.  In cases where it is determined by a third party that evidence is relevant to support refusal of an application it will be possible to bring it to the Examiner’s Attention.