Changes to renewal terms for registrations under Bill C-31 - avoiding potential pitfalls


Among the many changes to Canadian trademark law that will result from Bill C-31 is a change to the renewal period for trademark registrations. While Bill C-31 has received Royal Assent and is thus now law, the Canadian Trademarks Office has indicated that the amendments to the Trademarks Act will not actually come into force until late 2015 or early 2016. This intervening period will provide time for the Trademarks Office to oversee the necessary amendments to the Trademarks Regulations and to make changes to its information technology systems. The precise date on which the amendments to the act will come into force is therefore not yet known. As discussed below, this could lead to some uncertainty regarding renewal terms for trademark registrations during the transition period to the new legislation.

Under the provisions of the act currently in force, Section 46 provides that registrations are subject to renewal within a term of 15 years from the day of the registration or last renewal. Under current practice, it is possible to renew registrations as far in advance of the renewal deadline as the applicant chooses. In addition, there is a six-month grace period after the renewal deadline during which renewal can also be achieved. 

Pursuant to Bill C-31, Section 46 will be amended to provide for a 10-year renewal term. In addition, registrants will only be able to renew the registration within a prescribed 12-month period, namely six months prior to the renewal deadline and six months after the renewal deadline. Consequently, renewing a registration more than six months in advance will no longer be permitted once the amendments to the act come into force.

Trademark owners should be particularly aware of the Trademark Office’s policy which will govern renewal during the period before the amendments to the act come into force. In particular, the Trademarks Office has indicated that for those registrations with a renewal deadline that falls on a date before the amendments come into force, the Trademarks Office will continue to grant renewals with a term of 15 years. For those registrations with a renewal deadline that falls on a date after the amendments to the act come into force, the Trademarks Office will grant renewals for a term of 10 years.

Notably, since the coming into force date is not currently known, the above Trademarks Office policy raises the possibility of uncertainty with respect to renewal terms in certain circumstances. For example, a registrant could renew a registration under the current practice well in advance of the deadline and obtain a renewal certificate that indicates a renewal term of 15 years. However, if the amendments to the act happen to come into force before the date of the registration’s original renewal deadline, then the renewal would be valid only for 10 years, despite the registrant being in possession of a renewal certificate indicating 15 years.

Once the precise coming into force date has been published by the Trademarks Office, it will be possible to identify with certainty the duration of the renewal period in all instances. In the interim, Canadian trademark owners and their agents will want to exercise caution when considering the renewal of registrations well in advance of the renewal deadline, at least for those registrations with renewal deadlines in the late 2015 to early 2016 timeframe, to ensure that they are monitoring and docketing the correct renewal period once the amendments to the act come into force.

Timothy Stevenson, Smart & Biggar/Fetherstonhaugh, Ottawa

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