From: Canadian Intellectual Property Office
Amendment date: June 17, 2019, January 17, 2020
This practice notice provides guidance on the renewal of trademark registrations.
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.
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.
Registered owners may, either on their own initiative or after receiving a notice under section 44.1 of the Act, group the goods or services listed in a trademark registration according to the classes of the Nice Classification.
As is the case at the examination stage, examiners will notify registered owners which of the goods or services, if any, in the registration are not properly grouped according to the Nice Classification. Examiners may, where appropriate, provide guidance as to the appropriate class for a given good or service.
However, contrary to what examiners can require during the examination of a trademark application, the Registrar does not have the authority to require that any of the goods or services in the registration be amended to comply with paragraph 30(2)(a) of the Act and section 29 of the Regulations in order to aid in the grouping of those goods or services in a particular class, since these provisions are applicable to applications and not registrations.
For example, generally the term "business planning" would fall within Class 35, but if it concerns any financial aspect of business planning then it would fall within Class 36. As a result, if the Nice Class information provided by the registered owner lists the services "business planning" in class 36, the Registrar will accept the proposed classification and assume the services concern the financial aspect of the services since the amendment to the service to specify the financial nature of the business planning cannot be required under the Act and the Regulations once the trademark has been registered.
Notwithstanding the above, registered owners may redefine any goods or services as listed in a trademark registration under paragraph 41(1)(c) of the Act so long as the scope of the statement of goods or services is not broadened.
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