Time to Act! June 17, 2019: Madrid Protocol Amendments to Canada Trademark Law Take Effect

To effect the transition to the Madrid Treaty protocol, the Canadian Intellectual Property Office (CIPO) will shut down its electronic filing service from June 13 to June 17, 2019 after which new amendments to Canada’s Trademark Act will go into effect. Trademark owners should assess the need to institute new applications, submit maintenance documents for existing registrations, and take appropriate action under the existing system before June 13, 2019 or after the amendments go into effect on June 17, 2019 to take advantage of the change in law. 

Nice Classification System of Goods and Services For New Trademark Applications

  • Consider filing new applications before filing fees increase.

Until June 13, 2019, use of the Nice Classifications for trademark applications in Canada is voluntary and a single application can cover goods and services falling into one or multiple classes all for a fixed filing fee of $250CAD. 

New trademark applications filed after June 17, 2019 when the Trademark Act goes into effect will be required to use Nice Classifications and filing fees will rise to $330CAD for the first class and $100CAD for each additional class. 

Currently, Canada does not require trademark registrations to specify the International Class of goods and services specified in connection with the mark. With the adoption of Madrid Treaty protocols, Canadian registrations will require applications to specify the International Classification of Goods and Services (Nice Classification) groups for all products and services described in the application.

The Nice Classification groups goods and services into 45 “classes.” All goods fall within classes 1 to 34, and services are grouped in classes 35 to 45. The Nice Classification coordinates trademark applications globally to a single classification system for member countries, increasing the ability of trademark owners to develop consistency over and manage an international trademark portfolio. 

Trademark Registration Initial Terms Reduced from 15 years to 10 years

  • Consider renewing existing applications before renewal fees increase.

The initial term of currently issued registrations in Canada is 15 years. 

Upon implementation of the amended Trademark Act and adoption of Nice Classifications beginning in July 17, 2019, trademarks registered with CIPO will have an initial term of 10 years, bringing Canada in line with most other countries and in compliance with the requirements for international registrations. 

Renewal fees for current trademark registrations in Canada processed before June 13 are fixed at $350CAD and as the Nice Classification is voluntary, there are no additional fees for registrations with multiple classes.

If you have any questions regarding trademark protection, please contact your H&C attorney or a member of the IP Group.

Mitesh Patel
Allonn Levy
Cary Chien
Celine Guillou
Chiara Portner
Christopher Hohn
Gail Hashimoto
Gideon Korrell
Jason Angell
Jed Dooley
Jeffrey Ratinoff
Jennifer Coleman
John Picone

Stay up to date on the latest news, alerts, events and legal insights: