To Renew or Not Renew – Has CIPO Answered the Question?

Bill C-31, which is expected to come into force in late 2015 or early 2016, will reduce the Canadian trademark registration period from 15 years to 10 years.  As a result, many trademark owners have opted to renew their registrations early in order to take advantage of the current 15 year registration period.

CIPO  has recently announced that the following policy will be implemented for dealing with renewals during the period prior to the implementation of Bill C-31:  registrations with a renewal deadline that falls before the amendments come into force will be given a 15 year renewal period; registrations with a renewal deadline that falls after the amendments come into force will be given a 10 year renewal period.  Seems simple enough.

However, the Office has not addressed what will happen to those registrations that have renewal deadlines that fall after the amendments come into force, but that have already been renewed under the current practice (which permits renewal of a mark well in advance of the deadline).  In those cases,  the Office has already issued a renewal certificate with a 15 year term.  Will the Office revoke the renewal certificate, and issue a new one with a 10 year term?  This will create a heavy administrative burden on the Office, as well as a great deal of uncertainty for trademark owners.

In summary, if you are a trademark owner and your registration period expires beyond 2016, be aware that even if you process an early renewal of your registration, the Office may shorten your registration period to 10 years, despite having issued a renewal certificate for a 15 year period.  If your registration period expires in 2015 or 2016, then it is worthwhile to seek early renewal in the hopes the implementation of Bill C-31 will be delayed and that you will be able to take advantage of the extended 15 year period that is currently available.

For further information, please contact Paula Clancy.

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