Countdown to Canada's new Trademarks Act: Take action

28 March 2019

With the June 17 "coming into force" date of the new Canadian Trademarks Act fast approaching, there are opportunities you can be taking advantage of NOW. Below, we highlight some practical tips and considerations to help you maximize the opportunities and prepare for the new realities.

Save money

Under the new Trademarks Act, filing fees and renewal fees will be charged on a per-class basis.

  • File, or renew, multi-class applications NOW to avoid per-class filing and renewal fees.
  • After June 17, create a renewal strategy that takes into consideration the fact that renewal fees will be charged on the basis of how many classes are listed at the time of renewal. Work with your Gowling WLG professional to ensure unwanted classes are deleted in advance.

Save time

Once the Madrid System is adopted, and with the use requirement eliminated as a prerequisite to registration, we expect Canada's trademark registrar to become significantly more crowded.

  • To the extent possible, file applications NOW to avoid delays.

Stand your ground

Brand owners should expect a more competitive trademark landscape in Canada going forward. Having the proper protections in place, complemented by a solid enforcement strategy, will be critical.

  • Subscribe to a trademark Watch Service.
  • Keep solid records and samples of use in Canada.
  • Take advantage of the "Notification of Third Party Rights" process that will be permitted after June 17, which allows parties to direct the Registrar's attention to prior rights of interest.

No use in waiting

  • With the elimination of use as a prerequisite to registration, speak to your Gowling WLG professional about brand extension applications and defensive filings NOW.

To ensure your business is best equipped to respond to the new realities of Canada's evolving trademark landscape, contact us to review your portfolio and discuss your strategy.

In the weeks ahead, look out for additional alerts from our trademarks team as we continue to count down the days until the new Act comes into effect.

NOT LEGAL ADVICE. Information made available on this website in any form is for information purposes only. It is not, and should not be taken as, legal advice. You should not rely on, or take or fail to take any action based upon this information. Never disregard professional legal advice or delay in seeking legal advice because of something you have read on this website. Gowling WLG professionals will be pleased to discuss resolutions to specific legal concerns you may have.