To Register or Not to Register (before June 2019)

Photo by Phil Desforges on Unsplash

By Paula Clancy

​On June 17, 2019 Canada's trademark laws will change dramatically. Some of the critical changes include: ​

•  the reduction of the registration period from 15 years to 10 years
•  the elimination of the requirement to file a Declaration of Use
•  the introduction of per class registration fees​​

Applicants who have pending "allowed" trademark applications therefore have an option: namely, to register prior to June 2019 or to wait.  Let's review the pros and cons: one of the primary reasons to wait would be to take advantage of the fact that the requirement to file a Declaration of Use will be eliminated.  This means that if "Proposed Use" was claimed in respect of any goods or services, and if use has not yet commenced in Canada, the mark may nonetheless proceed to registration post-June 2019.  In other words, the applicant will not be required to file a Declaration of Use or delete goods and services that are not currently in use in Canada to proceed to registration.

The advantage of proceeding to registration prior to June 2019 is that the applicant will benefit from a flat registration fee of $200 (as opposed to a per class registration fee), and the applicant will receive a 15 year registration period.  Of course, this may require the deletion of goods and services for which Proposed Use was claimed, if use of the mark has not yet commenced with respect to same.

Please contact Paula Clancy if you would like further information about the legislative changes coming in June 2019.

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