Canadian trade-mark registration term reduced from 15 to 10 years – Early renewal of current registrations to be considered

September 19th, 2014

Several amendments to the Trade-marks Act(the “Act”) are expected to come into effect at the end of 2014 or during 2015 and the Canadian government is currently working on amendments to the Trade-mark Regulations (the “Regulations”) and on transitional provisions to the coming into effect amendment to the Act.

One of the amendments relates to the term of trade-mark registrations. The registration of a trade-mark is currently subject to renewal within a period of 15 years and this term is set to be brought down to 10 years. Furthermore, while the prescribed renewal fee is currently of $350 no matter how many wares and/or services are covered by the registration, it is expected that the amended Regulations may impose renewal fees as per the number of international classes of wares and services covered as Canada will finally adopt the international classification system by which most jurisdiction already abide. The government’s intentions regarding renewal fees are yet to be made known.

As it is currently possible to proceed with the renewal of a registration at any time before the expiry of the term of registration, it may be advantageous to proceed now with the renewal of all Canadian trade-mark registrations you intend to preserve by the end of its term of registration.

As mentioned above, the transitional provisions are not currently known. It is likely that all registrations that are subject to renewal before the end of 2015 (i.e. the anticipated deadline as per the information currently available) may benefit from a 15-year rather than a 10-year term. Furthermore, in renewing early it may be possible to avoid having to pay renewal fees per international class covered by the registration.

For registrations subject to renewal as of 2016, it may also be advantageous to renew early in order to ensure avoiding the potential payment of renewal fees per international class covered by the registration. An early renewal could also make you benefit from a 15-year term instead of a 10-year one, although it seems, from the information currently available, that the Registrar of Trade-marks will take the position that 15-year renewals issued before the coming into effect of the transitory provisions be brought down to 10 years. Uncertainty remaining however in this regard, an early renewal could nonetheless be advantageous.

For the reasons mentioned above, we invite you to consider the attached schedule, which lists your Canadian trade-mark registration(s) handled by BCF as well as the dates where each is due for renewal. If you are considering maintaining the mark(s) that is/are the object of the registration(s) listed hereafter past its/their current renewal date(s), we invite you to provide us with your instructions to renew by reply e-mail.

Regarding design marks (logos), you may need to consider whether or not the logo is expected to change before the renewal date. If so, we recommend discussing whether or not it is appropriate to proceed with an early renewal.

Kindly note that renewal fees are presently of $750 (including $400 in professional fees and $350 in regulatory fees, before tax and disbursements).

Unless you instruct us to proceed with the early renewal of any trade-mark in the attached schedule, we shall not take any measure to proceed with such. We shall rather contact you in due course, i.e. within six months before the renewal date as we usually do, to obtain your instructions.

Rest assured that we shall continue to manage all renewal deadlines and remain at your service in that regard.