As of January 1, 2024, the Canadian Intellectual Property Office (“CIPO”) is imposing a 25% fee increase to most official fees. This includes the filing fees, renewal fees, trademark opposition filing fees, fees for initiating administrative cancellation proceedings, and the fees for recording trademark assignments. 

The fee increase will apply both to national applications and to designations under the Madrid Protocol. By way of example, the filing fees for a 3 class trademark application (a fairly common application) will increase from $557.87 to $736. Filing a trademark opposition currently requires payment of $789.04 to CIPO, but starting on Jan. 1, 2024 this fee will increase to $1040.

CIPO's financial sustainability is fully dependent on service fees-generated revenue; the fee increases are intended to address CIPO's structural deficit. CIPO indicates that the fee increase is a consequence of “[a] number of operational and financial factors [that] have converged to put the organization in a critical financial position, including almost 30% inflation since 2004, labour costs, application volumes and critical capital investments.” 

Meanwhile, CIPO's 2023-2028 business plan acknowledges that there are “significant turnaround time challenges in its trademark operations”, such that there is now a “sizeable backlog” in unexamined trademarks. 

As of August 2023, CIPO was assigning Examiners applications that did not use pre-approved terms that were filed in April 2019. This may indicate that examination reports may be issued close to four and a half years after filing. Applications using pre-approved lists of goods and services and Madrid Protocol applications are faring much better, with turnaround times for examination being in the 16-month range. National applications using pre-approved lists of goods and services are now being processed faster than Madrid Protocol applications.

Canadian practitioners are hoping that this fee increase will allow CIPO to address this massive backlog in short order. This is especially important for applicants who use trademarks in the province of Quebec in a language other than French, and come June 1, 2025, these trademarks will need to be translated into French if they remain unregistered.

In the meantime, businesses in Canada and abroad have until January 2024 before the price increase comes into effect. This a good time to reevaluate your trademark strategy and determine whether new filings or Canadian designations are in order. These can then be filed or designated prior to the fee increase. Potential opponents should also bear in mind this fee increase and plan the filing of their Statement of Opposition accordingly.

Where possible an application should use pre-approved goods and services for national filings in order to shorten examination times. If that is not possible, applicants could consider filing two applications, one of which will include only pre-approved goods and services.

To obtain the most value for money, applicants should consider requesting expedited examination where it is needed for certain enforcement activities or in other special cases. This pathway requires the submission of an affidavit or statutory declaration that sets out one of the following scenarios:

  1. A court action is expected or underway in Canada with respect to the applicant's trademark in association with the goods or services listed in the application;
  2. The applicant is in the process of combating counterfeit products at the Canadian border with respect to the applicant's trademark in association with the goods or services listed in the application;
  3. The applicant requires registration of its trademark in order to protect its intellectual property rights from being severely disadvantaged on online marketplaces; or
  4. The applicant requires registration of its trademark in order to preserve its claim to priority within a defined deadline and following a request by a foreign intellectual property office. Note that in such cases the request will need to be attached to the affidavit or statutory declaration. 

CIPO does not require payment of any additional fees for expedited examination. The intellectual property team and trademark agents at Fasken remain available to assist your business during this transition. 

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.