Knowledge & News

Strategies and pitfalls with fees under Canada’s new trademark regime

17 September 2019

With a view to modernising Canada’s trademark regime to align with, among others, the Nice Agreement, significant amendments were introduced to the Trademarks Act (RSC 1985, c T-13) as of 17 June 2019. Below are some fee-based strategies to utilise under the amended act.

Fees for applications

Specifications of goods and/or services in national applications must now be classified in accordance with the Nice Classification. The quantum of per-class filing fees levied on applications by the Canadian Trademarks Office (TMO) are assessed at the time of filing, which can result in cost consequences for applicants in examination.

In most other countries, such as the United States, an applicant can file a multi-class specification of goods and services by paying a single class fee and subsequently pay any extra per-class filing fees only for those classes retained in the application. In Canada, if the TMO assesses that a specification of goods and/or services has more classes than originally identified in an application, the applicant must pay per-class fees for all of the additional classes, whether or not the goods and/or services falling into the additional classes are retained in the application. An applicant cannot avoid the extra filing fees by deleting the goods and/or services in the additional classes.

Fees for divisional applications

A welcome change in the act is the introduction of divisional applications, which permits part of the goods and/or services in an application to be transferred into a new related application. Applicants may divide their trademark applications at any time prior to registration in Canada while retaining the filing date of the original application. Divisional applications may themselves be divided. This provides applicants much needed flexibility in the face of an objection in examination or opposition that only affects part of the goods and/or services in their applications.

One complication is that all per-class fees stemming from the original application must be paid to have the original application and any of its divisional applications advertised. If per-class filing fees are deemed not to be paid on either the original application or any of its divisional applications, the original application and any subsequent divisional applications will not be advertised and held in examination until such payment is made.

Fees in renewals

Under the amended act, the quantum of renewal fees crystallises as at the date the renewal is attended to. This is problematic for older registrations due for renewal after 17 June 2019 that have not been classified under the Nice Classification and the number of classes in a registration is unknown.

In such cases, the unclassified registration is renewed simply by paying a single class renewal fee. The TMO then assesses the classes in the registration and sets a date by which outstanding per-class fees come due. The registrant cannot avoid the additional fees by subsequently deleting the goods and/or services not of interest from the registration. Indeed, failure to pay the fees by the deadline set by the TMO may result in expungement of the registration.

Recommendations

There are real cost consequences to brand owners under the amended act and it is recommended as follows:

  • Applicants must be cognizant of the cost consequences of overly broad specification of goods and/or services when filing national applications;
  • Ensure that all filing fees are paid when dividing applications prior to advertisement to avoid delays in examination. Guidance from local counsel in this regard would be helpful.
  • Voluntarily classify goods and/or services in older registrations prior to renewal to avoid any surprise renewal fees.

This article first appeared on WTR Daily, part of World Trademark Review, in September 2019. For further information, please go to www.worldtrademarkreview.com.

Authors

Sanjukta Tole

Sanjukta Tole Partner Toronto (Canada) Canadian Trademark Agent, Barrister and Solicitor

Vithooshan Vijayakumaran

Vithooshan Vijayakumaran Associate Toronto (Canada) Barrister and Solicitor

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