On January 1, 2024, the Canadian Intellectual Property Office (CIPO) introduced significant increases to the government fees it levies on actions before the Canadian Trademarks Office, including fee increases of over 30% for filing applications and renewing registrations. Similar fee increases have also been implemented for opposition and non-use cancellation proceedings, among other transactions.
With a potential 56-month wait for first examination of certain applications and delays before the Trademarks Opposition Board, this hike in fees has raised eyebrows among brand owners. So, is it still worth filing in Canada with the added costs? The answer is yes, especiallywith the right strategies in place.
CIPO has been cognizant of the delays and has introduced several policies to alleviate the impact they may have on brand owners and provide commercial certainty, particularly following the more stringent translation requirements introduced in Quebec that largely come into force in 2025.
Any application filed on or after January 1, 2024, will have the followingmaximumwait times:
- Applications designated in Canada via the Madrid Protocol are required by statute to be examined within 18 months;
- National applications using pre-approved terms from the Goods and Services Manual (GSM) will likely be examined within 18 months; and
- All other national applications are targeted for examination no later than 28 months after filing.
What about applications filed prior to January 1, 2024? Most objections raised in examination deal with the description of goods and services in applications as, unlike most jurisdictions, CIPO accepts only goods and services described in ordinary commercial terms. Applications utilizing goods and services described using only pre-approved terms from the GSM are placed in an expedited queue with wait times reduced by up to 38 months.
CIPO issues pre-assessment letters to advise applicants if the specifications in their national applications are pre-approved and fall in the expedited queue. As of 2023, the pre-assessment letters identify which terms in the list of goods and services are pre-approved, which allows applicants to deduce which terms may face objections and correct them.
It is not always possible to utilize pre-approved terms from the GSM when filing a national application, particularly if a priority claim is included based on a foreign application. CIPO allows applicants to request pre-approval of goods and services for addition to the GSM, a generally cost-effective process that can increase efficiencies for further applications in Canada as well. If a term is uncommon but viewed by CIPO as being an ordinary commercial term following receipt of an applicant's request, CIPO will permit this to be included in an application as a custom description that is pre-approved for a particular application. This strategy can be applied to any application regardless of when it is filed and may allow applicants to avoid objections from examiners.
Of course, CIPO still has mechanisms in place that permit applications, in specific circumstances, to go to the front of the line (regardless of when they are filed). These specific circumstances largely deal with combatting infringement.
Examination has also seen significant improvement due to the hiring of hundreds of new examiners, provision of examiner correspondence by email, access to all trademark documents online on CIPO's trademark database, and an uptick in requests from examiners for amendments over the telephone with approval notices often issuing quickly if applicants provide responses within five business days. After compressed timelines came into force on December 1, 2023, opposition proceedings are also expected to speed up by several months.
We expect further changes to Canadian trademark practice to come into force in the near future that will improve practice even further.
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.
