Canadian Trademark reform: what you need to know | CFIB

our business name, brand names, corporate colours, slogans, and logos are all part of your corporate image. Customers do business with companies they recognize and trust, which is why it’s important to protect your corporate image. One way to do that is by registering those aspects of your business image that are uniquely yours. 

Canada has completed a thorough overhaul of its trademark legislation, harmonizing with other countries to make it easier for you to protect your company’s image across the globe. New regulations came into effect on June 17, 2019, and we’re here to break down what they mean for your business. 

What’s a trademark? Why should I get one?

A trademark is one or more words, sounds or designs used to identify the goods or services of a person or organization. Your trademark helps distinguish your goods or services from those of other businesses. A trademark registration is proof of ownership. If you find yourself in a dispute, the registered owner does not have to prove ownership; the duty is on the challenger.

How long will I own my trademark?

Currently, trademarks are valid for 15 years in Canada. Any trademarks registered on or after June 17, 2019, will only be valid for 10 years.

Major changes coming

As it stands, when you file a trademark application, you must provide a date of first use or a statement that you started using your trademark before applying to register it.

Once the amendments to the Trademarks Act are in force, providing a pre-registration statement of use will no longer be mandatory. You will be able to file a trademark application whether or not you plan to use the trademark. 

This has led to an increase in applications, partially due to businesses wanting to protect their trademarks, but also due to fears of trademark trolls, or trademark squatters, who register trademarks and then sell them to the rightful owners at an inflated price. 

Increased costs, but added benefits

When you register your trademark, you have to describe the classification of the goods and services associated with your trademark. Currently, goods and services need only be described in ordinary commercial terms.

In order to comply with the Nice Agreement, an international treaty adopted by Canada, you will need to include the classes under which the goods and services fall within the Nice Classification System. 

Compliance with the Nice Agreement will mean a fee increase; currently, there is a registration fee of $200 and a filing fee of $250, no matter the number of classes that the applicant is filing for. After June 17, the initial application will cost $330, with an extra $100 for each additional class.

Brand owners considering multi-class applications will want to file prior to the June 17 changes to avoid these higher fees. 

However, these increased costs come with increased benefits:

• One form, one transaction, one currency, one place—You can apply for trademark protection in multiple countries with one application form 
• Harmonized administrative procedures and formalities—Standardized trademark procedures in multiple countries leading to efficiencies, administrative savings and reduced compliance costs for businesses.
• Consistent goods and services classification system—Goods and services with which trademarks are used are classified consistently across multiple countries facilitating global trademark searching.

The Canadian Intellectual Property Office has more information on trademarks, and you can call your CFIB Business Counsellor with any questions.