A TRADEMARK PRIMER FOR FRANCHISING IN CANADA: Everything you need to know about the Great White North's trademark registration system.

Author:Marrocco, Andrae
 
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Canada's trademark registration system is undergoing a significant transformation intended as part of the modernization of the national intellectual property framework. In addition to substantial amendments to the Trademarks Act (Canada), the regulations and Trademark Office practices, Canada is joining three international trademark treaties.

Not only is Canada finally accending to the Madrid Protocol, an international system for obtaining trademark registrations for multiple jurisdictions through the use of a single application, but Canada is also joining the Nice Agreement (Nice), which establishes an international classification system for goods and services in trademark registrations, as well as the Singapore Treaty, which seeks to harmonize administrative procedures pertaining to the trademark registration process. Here are some answers to the biggest questions facing franchise businesses in the country.

Q: When do the changes take effect?

A: The Trademarks Act has been amended and the changes are scheduled to come into force on June 17, 2019.

Q: What do franchisors need to know?

A: From a legacy portfolio management perspective, franchisors should be aware of the following key changes.

* Renewal terms will be reduced from 15 years to 10 years.

* Renewal fees are increasing from the current $350 flat fee, to a fee per class system, namely $400 for the first class and $125 for each additional class.

* All descriptions of goods and services will eventually have to be grouped and classed according to Nice.

* If your registration is due for renewal before the implementation date, you should request renewal now and not wait for the grace period to renew.

* If your registration is due for renewal on or after the implementation date, you can avoid the renewal fee increase and defer the obligation to group/class your trademarks by having your renewal application processed before the implementation date.

* Importantly, after the implementation date, it will only be possible to renew registrations in the six month window immediately before and immediately after the renewal deadline. At present (and until the implementation date) it is possible to renew a registration notwithstanding that the renewal deadline does not occur until years in the future.

In light of the above, to avoid paying the increased renewal fees, particularly in respect of multi-class registrations, you may wish to consider requesting renewal on key trademarks that have years...

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