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Intellectual Property, Litigation

Upcoming changes to the Trade-marks Act

Aug 15th, 2017

By Janet Dell'Orto

If you have not yet applied for registration of your trade-mark, do not waste any time, file it as soon as possible.

If all goes as planned by the Federal Government, Canada will soon be a member of the Madrid Protocol, an international treaty whereby an applicant can seek registration of a trade-mark in any of the countries that are members of the Madrid Protocol by filing one application. Membership will result in changes to the Trade-marks Act (the “Act”) and the Trade-mark Regulations (the “Regulations”), which should be finalized some time next year.

The principal changes to the Act and the Regulations are as follows:

  1. Applications fees will be charged per Class of goods/services (currently one application fee, regardless of the number of Classes in question).
  2. No Declaration of Use will be required (currently the mark must be in use in order to obtain registration).
  3. Registration will be for 10 years (currently 15 years).

As a result of these changes, not only will the cost of obtaining registration of a mark increase, since the use requirement will no longer apply, anyone will be able to apply for and obtain registration of a mark. Trade-mark owners will therefore be required to be more vigilant in monitoring their marks and opposing any new application that infringes on their mark.

The cost to monitor your mark and oppose any third party application is far greater than the cost of obtaining registration or your mark.

All the more reason to apply for registration of your mark now, before the changes become official.