A guide to Canadian trademark renewals under the new Canadian Trademarks Act

Susannah: Hello. Susannah Rolston here from the Toronto office of Gowling WLG. I'm going to be talking about the Canadian trademark renewal process under the new Canadian Trademarks Act. The Canadian Trademarks Act underwent significant changes June 17, 2019. A number of those changes affect the renewal process. Those include changes to the amount of fees, which have increased, and our now charged on the basis of per class. The term of the registration has now changed to 10 years. The adoption of the niche classification system now means that classification of your registration is a requirement of renewal. There were no requests for registrations granted after June 17, 2019. It can only be filed 6 months prior to or 6 months subsequent to the renewal date.

I'm going to spend a bit of time on classification as this is the most complicated part of the process. You can classify either prior to renewal or after renewal. If you classify your registration prior to renewal this is called voluntary classification. It enables you to partially renew a registration for restricted classes of goods and services. There is no government fee for classification and classification must be done electronically by either the recorded agent of record or, if there's no recorded agent of record, by the owner itself. If the office doesn't agree with your classification request the examiner will issue an office action providing you with suggestions and guidance in how to properly classify your mark. There are deadlines associated with these office actions, and if these deadlines are not met, the office may enter on the register a classification suggested in the office action. There's no requirement to amend your goods and services which means that you're able to maintain broad descriptions of terms in your registrations that normally would not be acceptable today.

I'm going to run you through two renewal processes. The first one is voluntary classification, where you classify the mark first. We suggest that you start the classification request process early as we're seeing significant backlog of classification requests. You may at this time also wish to file a recordal of the change of name, or ownership, or address of the owner in order to update your registration. Once the Trademarks Office confirms your classification request has been approved you can, at that time, determine whether or not you're going to partially renew the mark for some classes or you're going to renew the mark for all classes. You the pay the required fees and your mark is renewed.

The other renewal process is when you paid the renewal fee for the first class and then the office would ask you to classify the mark. Once the Trademarks Office approves your classification request it will issue an adjusted renewal fee notice advising you of all of the fees that are now required in order to complete renewal of the mark.

Thank you for listening today. If you have any questions on the Canadian renewal process please feel free to contact me or your Gowling's professional will be happy to answer any questions.