Intellectual Property

Canadian trademark, patent regulations going international

Proposed changes to Canadian trademark and patent laws, to bring them in line with international treaties, will be beneficial going forward, says Toronto intellectual property lawyer Taras Kulish.

Kulish, a senior associate with Steinberg Title Hope & Israel LLP, says the changes proposed by the Canadian Intellectual Property Office (CIPO) are still at the consultation stage but those in the trademark bar expect them to be enacted.

“What these proposed changes will do is bring Canada in line with the international treaties — such as the Nice Classification, the Madrid Protocol and the Singapore Treaty on the Law of Trademarks,” Kulish tells “The laws in Canada haven’t really changed since the 1950s so it’s about time.”

He says the changes, when enacted, will present some significant advantages to those looking to register trademarks internationally.

“It means you can use your filing in Canada to springboard to other jurisdictions,” says Kulish, who is a member of the Ontario, Quebec and New York Bars as well as a trademark agent registered with CIPO and the United States Patent and Trademark Office. “These changes will give clients easier access to Europe, Asia, Australia and other regions. It will really facilitate the process.”

Under the current regime, trademark applications must be filed in each jurisdiction, each with different requirements. The use of third-party agents can become complex and expensive, so having a streamlined process where classifications and other protocols are aligned will make it smoother and more efficient, Kulish says.

“These changes will open up competition and will be better for trade,” he adds.

Currently, applicants to CIPO pay two fees — $250 to file and then $200 on registration with renewals every 15 years. Under the proposal, it will be $330 to file and register but each additional request will cost an additional $100. Renewals will cost $125 for each classification but will only be good for 10 years.

“The fees haven’t been raised in years so this is no surprise,” Kulish says. “It will also mean that people will have to think about what classifications they really want when filing. Some file a shopping list of goods and services covering a multitude of classifications, even in sectors where it’s doubtful they’re doing much business, because they want to grab everything. As a result, there’s a lot of deadwood registered out there. The additional cost per class will make people think twice.”

With no looming date on the horizon, intellectual property lawyers are in a period of adjustment, he says, looking at the impact of the proposals and having conversations with their clients.

“Some clients might want to renew as soon as they can, within a year of their renewal dates as allowed, because they will get the benefit of the current 15-year-term and be able to retain their classifications at no extra cost,” Kulish says. “There could be a flurry of renewals as we get closer to these changes being enacted.”

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