As promised, the Canadian Intellectual Property Office
("CIPO") has just released information on the proposed
new fees that will apply when amendments to the Trademarks
Act are put into effect, and has set a deadline of July 5,
2016 for comments. The main impact of the proposal is to implement
fees per class, in keeping with other amendments to the
Act, and with international treaties that will also become
effective when the Act amendments are implemented. Those
require applicants and registrants to provide Nice Classification
of goods and services, and the new fee proposal reflects fees per
class, both at filing and renewal. Registration fees will be
eliminated for applications filed after the coming-into-force date
of the amendments, and other fee-based activities, such as filing
certified copies of registrations, and extensions of time to file
declarations of use, will also no longer apply, making filing and
renewal fees the only government fees applicable for obtaining and
maintaining a registration. The latest estimate for
implementation of these changes is spring, 2018.
CIPO is required to publicly consult on fee changes, and the
consultation document (available here) not only includes details of
the proposed new fees, but also some background on the impact of
the fee change.
The proposed new fees for online filing and renewal are as
Filing in 1 class: $330 (online filing)
Additional fee/class: $100
Renewal: 1 class - $400 (online)
Additional fee/class - $125
(All numbers in Canadian dollars).
Additional fees will apply if filings/renewals are filed by paper
Currently, the trademark filing fee is $250 regardless of the
number of goods/services, and the registration fee is $200, for a
total of $450 for an application based on actual use in Canada.
Extra costs could be incurred if applications are based on use and
registration abroad, or if the applicant needs an extension of time
to file a declaration of use. The current renewal fee is
$350, and the term is 15 years. Under the amendments, the term will
shorten to 10 years, in keeping with international norms.
CIPO has concluded that these new per class fees are not
expected to have a "significant impact". They
note that on average, over the last 5 years, 49% of applicants now
file for goods/services that would fall into just one class, and
for these, total government fees will now be lower. However, for
the rest, the costs to obtain registrations may be higher. As
an observation, since the Trademarks Act amendments were
first proposed in 2014, and applicants became aware of the
likelihood of new fees per class, lists of goods and services
appear to have increased, making it likely that more than 50% of
all applicants now file for goods and services that fall into
The setting of higher renewal fees is partly to address a likely
result of eliminating use as a registration requirement, namely
more registrations for longer lists of goods and services that are
not in use. Concerns have been expressed about the impact on
trademark clearance, use and enforcement of permitting
registrations with no use in Canada or abroad, and no additional
use requirements during the registration term or on renewal. The
potential for such "cluttering" of the Register of
trademarks is acknowledged with CIPO's suggestion that higher
fees will dissuade renewal of less valuable marks, and
"ensures" renewal of marks actually in use in the
Canadian marketplace, thus improving the quality of the Register
information. However, with no Canadian use requirements at
registration or renewal, the Register will still partially reflect
the rights of companies prepared to pay for registration and
renewal as a sound business strategy to maximize their rights.
Canadian trademark filing and renewal fees will continue to be
generally lower than comparable costs in other countries. Canadians
now file applications at a lower rate than nationals of many other
countries, and it is hoped that higher fees will not challenge
Canadian businesses. For applicants and registrants from other
countries, direct filing costs in Canada will be more in line with
expectations in many other countries, supporting CIPO's
suggestion that the fee changes are not likely to have a
One final point: current government fees for filing and
registration are, as noted, $450 combined for application and
registration, regardless of the number of classes. While
registration fees will continue to apply for applications filed
before the coming-into-force date, it is not expected that any per
class fees will be charged for applications pending at that date.
So, for now, filing in multiple classes remains a great Canadian
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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