Mar 2019 Charity & NFP Law Update
As previously reported in the November 2018 Charity & NFP Law Update, significant changes to Canada’s trademark law will take effect on June 17, 2019. As this date is fast approaching, charities and not-for-profits are reminded of the need to consider some of the key changes that will impact the way they approach protection of their intellectual property, both now and in the future.
In this regard, charities and not-for-profits should carefully review their trademark portfolios prior to June 17, 2019 and begin filing any outstanding trademark applications while the filing fees remain modest. After June 17, 2019, the filing fees will be increasing significantly, as trademarks will be registered on a fee per class basis. The current government flat filing fee of $250 CAD, regardless of the number of classes, will soon be replaced by a $330 CAD filing fee per class, plus $100 CAD for each additional class of goods and services.
The most significant change to Canada’s trademark regime is the simplification of the application process by removing the current “use” requirements. Trademark applicants will no longer be required to have first used the trademark, whether in Canada or abroad, prior to registration. This will open the door to trademark squatters and trolls to register marks that are currently unregistered. As has been stressed in the past, charities and not-for-profits with unregistered marks should be monitoring their marks and should act quickly to register their marks, or risk squatters and trolls registering their marks and requesting large sums of money in exchange for the registration certificate.
Currently, registered trademarks must be renewed every 15 years from the date of registration or their last renewal. However, as of June 17, 2019, this renewal period will be shortened from 15 years to 10 years. In addition to the shortened renewal period, the fee for renewals will increase significantly for multi-class registrations, as discussed above. In order to take advantage of the lower renewal fees and maintain all classes of goods and services for one fixed-fee, charities and not-for-profits that own registered trademarks should renew these registrations before June 17, 2019.