Renewals

Publication date:

Amendment date: June 17, 2019

This practice notice provides guidance on the renewal of trademark registrations.

Partial Renewal

The registration of a trademark may be renewed for some or all of the goods or services in respect of which the trademark is registered. If a registered owner requests the renewal of only some of the goods or services listed in the register for a registration ("partial renewal"), the registration will be renewed only for those goods and services listed in the renewal request.

A partial renewal can be submitted online only if the goods or services in respect of which the trademark is registered are grouped according to the classes of the Nice Classification, all the goods or services grouped in a class are being renewed, and the remaining goods or services are being deleted.

If a partial renewal is not submitted online, the Registrar will send a letter acknowledging receipt of the renewal fee. The particulars of the partial renewal will be available, and the Registrar will issue a certificate of renewal, only after the registration or previous renewal period has expired or the remaining goods or services not being renewed are deleted. Given the potential delay between submitting a partial renewal and receiving a certificate of renewal, registered owners are strongly encouraged to either renew near the expiry of the registration or renewal period or delete the goods or services not being renewed at the time of the partial renewal.

Renewal Fee

The prescribed fee for renewing the registration of a trademark for 10 years under section 46 of the Trademarks Act is set out in item 14 of the schedule of the Trademarks Regulations. The fee is dependent on the number of classes of goods or services being renewed and determined at the time of renewal. Unless specified when submitting the renewal fee, a renewal applies to all the goods or services listed in the register for the registration.

Submission of the Renewal Fee

Except in the cases described below, a renewal fee must be submitted no earlier than 6 months before the expiry of the initial period or renewal period and no later than 6 months after the expiry of the initial period or renewal period or, if later, two months after a renewal notice.

Exception – First renewal after for registrations existing prior to

For trademarks registered prior to , there is no restriction on how early the renewal fee for the first renewal after may be submitted.

Exception – Not yet grouped according to the classes of the Nice Classification

If the goods or services listed in a trademark registration are not grouped according to the classes of the Nice Classification at the expiry of the registration, the period to submit a portion of the renewal fee may be later than the period described above. In particular, the portion of the renewal fee set out in item 14(a)(ii) and (b)(ii) of the schedule of the Regulations can be paid up to two months after the Registrar sends a notice indicating that the register has been amended to group the goods and services according to the Nice Classification.

Figure 1. Submission of renewal fee timeline
Figure 1. Submission of renewal fee timeline
Figure 1 - Text version

The diagram visually represents two scenarios of registration terms and renewals. The first scenario depicts if a trademark is registered after the coming into force (CIF) date. In this scenario, the registration can only be renewed within the prescribed period which starts six months before and ends six months after the expiration of the registration term. In the first scenario, both the initial registration term and the first renewal term depicted are of ten years each.

In the second scenario, the registration of the trademark occurred before the coming into force date (CIF) but will expire after CIF. Because the trademark was registered before CIF, the initial registration term is of 15 years. Since the expiration of the initial registration term falls after CIF, both following renewal terms depicted in the diagram are of ten years. In the second scenario, the registration can be renewed at any time during the initial 15 year registration term. However, during the subsequent 10 year renewal terms, it will only be possible to renew the registration during the prescribed period which starts six months before and ends six months after the expiration date of the renewal term.

Figure 2. Process for renewal of registrations not grouped according to Nice classification
Figure 2. Process for renewal of registrations not grouped according to Nice classification
Figure 2 - Text version

The diagram visually represents the renewal process for trademark registrations that do not group the goods or services according to the classes of the Nice Classification system at the time of renewal. If the registered owner pays at least the base renewal fee, the Office will renew the registration and then issue a subsection 44.1(1) notice which requires the registered owner to group all of the goods or services according to the classes of the Nice Classification system. If the base fee is not paid, the renewal cannot be processed. If the registered owner provides the goods or services grouped according to the classes of the Nice Classification system, the Office will issue an adjusted renewal fee notice if an additional fee must be paid. If the registered owner does not provide the Nice information, the Office will issue a further notice under subsection 44.1(3) of the Act giving the owner two additional months to provide the statement of goods or services grouped according to the classes of the Nice classification. If the Nice information is provided following the 44.1(3) 2-month notice, the Office will issue an adjusted renewal fee notice if an additional fee must be paid. The registration will be expunged if the registered owner has not provided the statement of goods or services grouped according to the Nice classification two months after the receipt of the further notice under 44.1(3) or if any adjusted renewal fee is not paid.

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