Canadian Trademark Renewal Requirements

By Josh Gerben, Esq.

As the owner of a trademark, you understand the significance of the legal protections that are afforded to your company and your brand through the registration. Widening the growth potential of your business often means looking beyond the borders of the United States and seeking international trademark registrations. For those looking to broaden their business in North America, the next logical step in expanding your trademark portfolio is to file an application in Canada (learn how to register your trademark in Canada here). Once the registration is obtained, it is imperative for trademark owners to ensure the validity of their mark by filing timely renewals.

Renewing Canadian Registrations

When the trademark registration is finalized, it is critical that the owner maintains their trademark by filing renewals. In Canada, the first renewal is due ten years from the date of registration, and each renewal following is needed every ten years thereafter. The filing can be made up to six months before or after the actual renewal date. Making the renewal filings in a timely manner is essential to prolonging the trademark protection that a Canadian registration offers; if the filing is not made by the appropriate deadline, there is a risk that the trademark will be canceled.

In order to file a renewal for a Canadian trademark, there are fees required; for the first class of goods and services, the cost is $400 CAD, which equates approximately $285 USD. If the registration has multiple classes, the fee increases by $125 CAD for each additional class. These fees are due at the time of renewal submission, but not more than six months before. Additionally, the corporation status of the company filing the renewal must be active and in good standing. Furthermore, to avoid cancellation from an outside party, the trademark’s owner should also be able to prove the use of the mark within the marketplace; however, there is no documentation of use required as part of the renewal.

A trademark’s renewal period is an opportune time for the trademark owner to consider expanding the goods or services listed in their registration. Renewal periods require an assessment of a company’s offerings and therefore expose different areas of the business that are not yet safeguarded by the trademark registration.  For example, if an IT company that offers a variety of technical services has recently started to produce and sell its own computer hardware, it would be advantageous for them to file another trademark application to secure their new goods as well. If the business finds itself pushing the boundaries of the items covered by the registration, it may be time to file another application to bolster its trademark protection in Canada.

Maintaining Canadian Trademarks

Overall, the key to successfully maintaining a Canadian trademark registration is by ensuring that timely renewal filings are made to continue the protections offered by the registration and prevent any chance of cancellation. Throughout the Canadian trademark’s lifetime, it is imperative to enlist the assistance of a trademark attorney–and is also required if you do not have a Canadian address. The invaluable legal advice the Canadian attorney has to offer not only keeps you on top of upcoming filing deadlines, but also gives you the best chance of successfully sustaining your mark through properly prepared renewals.

For Canadian businesses seeking trademark registration in the U.S., read the 5 steps here.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.