Richard S. Levy
|Marie Laure Leclercq
We expect the fundamentally reworked trademark law to come into force soon (in early 2019). But newspapers reported this week that there is strong pressure from the US to move the date closer in order to finally implement treaties signed by Canada years ago. All of this means that there is an urgency for business leaders to apply for Canada-wide protection of their marks immediately—under the current law.
When the new law is in force, those who file applications for trademark registrations will encounter much greater competition. The changes will ensure a much greater inflow of applications by foreign applicants. Fees will be higher, possibly much higher. The likelihood of applicants being involved in opposition disputes will grow dramatically. Processing times will be substantially slower.
Businesses should take action immediately and here is why:
- Outwit the Trolls and Scalpers
The most radical change in the law is that applicants will be able to obtain a registration without ever having to use the mark or declare that they have. Accordingly, we expect that “trolls” or “scalpers” will obtain registrations for the sole purpose of selling them at exorbitant prices to actual users or else to block or harass a competitor. You can protect yourself by filing now. You will avoid spending large amounts of money to buy trademark registrations from trolls or scalpers or to fight them in opposition or infringement proceedings.
- Go to the Front of the Line
For the first time, under the new law, Canada will accept international (aka “Madrid”) applications that designate Canada for inclusion. We expect that this will attract a large inflow of these filings that will greatly slow down examination and increase the likelihood of confusion objections. To complicate things further, many of these applications will claim earlier “priority filing dates”, leapfrogging them over applications actually filed earlier. Don’t wait to file … or you might end up waiting for a long time!
- Save Big
Take advantage of lower costs. Currently, Canada is a bargain. A one-size-fits-all application fee is payable, no matter how many kinds of goods and services are included. Under the new regulations, fees will be ramped up, as applicants must group goods and services in separate international classes and government fees will be charged for each class (there are 45!). You will avoid these costs if you file now under the current law.
Time is running out until the new law is enacted. On your marks. Get set. Register!