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Latest Estimates on Effective Date of Canadian Trademarks Act Amendments

October 19, 2015

By Cynthia Rowden

Last week, Johanne Bélisle, Canada’s recently-appointed Commissioner of Patents, Registrar of Trademarks and CEO of the Canadian Intellectual Property Office (CIPO), announced that the implementation of the Madrid Protocol, the Nice Agreement and the Singapore Treaty will occur in 2018. Other CIPO staff have confirmed that amendments to the Trademarks Act, passed but not yet implemented, will be put in effect at the same time.

Previously, CIPO had indicated that implementation was likely to occur in 2016 or 2017. Commissioner Bélisle’s announcement pushes back implementation another year at least. However, in anticipation of the Nice Classification requirements, the Trademarks Office has informally classified all pending and registered marks on the Register, and since late September 2015, has invited applicants to now use specific approved terms for goods and services, plus voluntarily assign Nice Classes to goods and services. Trademark owners are encouraged to carefully consider any marks that now have added class details, to ensure they correspond with the owner’s expectations. Some questions are outstanding, including the ability to change assigned classes, and the ultimate impact on fees for renewal.

It was also announced that a fee consultation on expected new fees for filing and renewal will take place in 2016.

We will keep you informed of all consultations and ongoing estimates of passage of all changes as they come to our attention. For further information on amendments to the Trademarks Act and how they might impact the rights of trademark owners, please contact Cynthia Rowden.

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