Planning for Change — Steps You Can Take Now in Preparation for the Changing Trademarks Act

February 22, 2018
By R. Scott MacKendrick  and Sharyn Costin

The following is part of Bereskin & Parr’s “Trademark Transition” series, and follows up on a webinar broadcast by Bereskin & Parr LLP on February 7, 2018. To listen to an archived version of the webinar click here.


With changes now appearing to be one year away, we recommend:

  1. To Audit your trademark use now:
  • Consider, what marks, what goods and what services?
  • Compare to your current registrations and identify gaps
  • File to address those gaps
  1. File now:
  • To take advantage of the current favourable fee structure
  • To protect common law rights and defend against poaching
  • For certain non-traditional marks (e.g., names, numbers), and to avoid distinctiveness evidence requirement
  1. Strategize on your current application portfolio, with the approaching in force date in mind:
  • What applications are allowed?
  • Are extensions available until the in force date?
  • If extensions are not available, consider refiling now
  1. Renew in 2018 to avoid incoming per class fee structure:
  • Consider that the term might be clawed back to ten years
  • There would appear to be no mechanism to allow the Trademarks Office to ask for additional per class fees once renewed
  1. Maintain “use” in Canada records:
  • Develop use record retention protocols
    • to defend against non-use cancellation proceedings, and
    • to be in a position to assert your registrations and common law rights

Join Bereskin & Parr’s trademark experts throughout 2018 to stay on top the upcoming changes to the Trademarks Act and how they will impact you. Our suite of webinars, articles and info sheets will highlight the key points you need to know now and provide strategies to save costs and avoid uncertainty.

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