May 2019 Charity & NFP Law Update
The significant changes to Canada’s trademark law are quickly approaching, as the changes are set to take effect on June 17, 2019. These changes will affect most charities and not-for-profits and have been discussed in Charity Law Bulletin No. 360, as well as the November 2018 Charity & NFP Law Update.
Key changes that will impact charities and not-for-profits include:
- The removal of the current “use” requirements. Trademark applicants will not be required to have first used the trademark, whether in Canada or abroad, before registration. This has led to trademark squatting and trolling.
- A streamlined international application process. Applicants and registrants will be able to register trademarks internationally in any of the 102 Madrid Protocol member countries without needing to file applications in each country.
- Adoption of the Nice Classification of goods and services. Applicants will need to classify goods and services in accordance with one of 45 classes.
- The government fees to file a trademark application will significantly increase to $330 CAD per application for one class of goods or services, plus an additional $100 CAD for each additional class, as opposed to the current flat government filing fee of $250 CAD regardless of the number of classes of goods and services.
- Trademarks are going to be examined for distinctiveness, making it more difficult to register non-distinctive trademarks.
- The term of registration and renewal will be reduced from 15 years to 10 years.
As previously indicated, charities and not-for-profits should prepare now for the above-noted changes in the following ways:
- Carefully review trademark portfolios now to ensure that any outstanding trademark applications are filed while filing fees remain modest and prior to third parties poaching trademarks.
- Ensure all used variations of a trademark are properly protected. File new applications for variations of trademarks that are currently used and not registered.
- For existing registrations, ensure all appropriate goods and services are included in the registrations.
- To save on filing fees in the future, consider expanding the scope of coverage of existing registrations to goods and services that the marks will be used in association with in the future.
- Renew any trademark registrations now to avoid per class renewal fees.
- Actively monitor trademark filings through trademark watching services in order to enforce trademark right and to stop trademark squatters and trolls.
The Canadian Intellectual Property Office (CIPO) has indicated that in order to avoid delays, communications with the Trademarks Office should be filed in advance of June 13, 2019 and that it will temporarily deactivate most of its online services between June 13, 2019 and June 17, 2019 for system upgrades and enhancements. It is therefore vital that charities and not-for-profits are proactive and take any necessary action now in advance of June 13, 2019.