Jul 19 2016

The Canadian Intellectual Property Office (CIPO) has confirmed what many have suspected. Class-based fees are coming to Canada. As a result, Applicants with multi-class applications may benefit from filing now, before these changes come into effect, likely in 2018.

In 2014, the Canadian government amended Canada’s Trademarks Act to introduce a host of new changes designed to bring Canada into the Nice Convention, Singapore Treaty, and the Madrid System.

The 2014 amendments are still not yet in force in Canada, in part due to the need for revisions to the Trademarks Regulations to accommodate the introduction of Nice classifications and Madrid applications. Consultations began in Fall of 2014; however, CIPO currently estimates that the new legislation will not be in force until 2018.

CIPO has taken another important step toward implementing the 2014 amendments. On June 6, 2016, CIPO released a consultation document setting out a new fee structure under the amended legislation.

Currently, electronic trademark applications in Canada are subject to:

• a filing fee of $250 CAD,
• a registration fee of $200 CAD, and
• a renewal fee of $350 CAD, if handled electronically.

Each of these are flat fees, regardless of the number of goods, services, or international classes in the application.

Under the new proposal, Canada’s registration fee would be eliminated. Electronic applications filed under the new legislation would be subject to:

• an initial filing fee of $330 CAD + $100 CAD for each additional class beyond the first; and
• a renewal fee of $400 CAD + $125 CAD for each additional class beyond the first.

No fees were proposed based on the number of goods within a class. CIPO expects that, on average, applicants will pay the same amount in government fees under the new system. Fees under the new proposal will also remain lower than many of Canada’s trading partners.

CIPO indicated that trademark applications filed before the new legislation comes into force will continue to benefit from the existing flat-fee system.

Applicants with particularly large lists of goods and services may therefore benefit from filing now, before the new legislation comes into force, to avoid class-based filing fees. For example, an application filed today for 10 international classes could save $780 CAD in government fees over the proposed class-based filing fee, despite the elimination of the $200 CAD registration fee.

As noted above, CIPO has also proposed to move renewal fees to a class-based system. Under the existing legislation, the renewal of a registration only takes effect on the anniversary of the registration date. As a result, early payment of the renewal fee will not avoid the new fee system. Existing registrations with renewal dates that fall after the coming into force date of the new legislation (which has yet to be announced) will inevitably be subject to the new fee structure.

Although it appears clear that class-based fees are coming to Canada, the precise details of Canada’s new trademark fee structure have yet to be formalized. Public comments have now closed, but the consultation process on the fee structure will likely continue into the Fall of 2016, with a report to be tabled in Parliament.

Authors: Andrew Montague (former associate)

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Tags: CIPO, Madrid Protocol, Trademarks, Trademarks Act