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10 June 2019
With the long-awaited changes to the Canadian Trademarks Act and Regulations imminent, brand owners should be excited about Canada's alignment with international trademark standards and the new opportunities that these changes will bring.
Among the changes coming into force in Canada on 17 June 2019 is the addition of provisions that will, among other things, require all trademark applications and registrations to comply with the Nice Classification system. The Nice Classification system categorises goods and services into 45 general classes that are (more or less) harmonised across member countries to facilitate global trademark searching and comparison.
However, brand owners should be aware that Canada has adopted a unique policy concerning the required filing fees which differs significantly from the general practice of other member countries.
The Trademarks Office will charge a separate fee per class, where the number of classes will depend on the type of goods and services listed in the trademark application. The government filing fee will be C$330 for the first class and C$100 for each additional class.
In other countries, if an examiner decides that certain goods or services belong in classes not yet listed in the application, the examiner may require that additional classes be added. In that case, the applicant has a choice: they can pay a fee for each additional class identified by the examiner or they can delete or amend the goods or services in issue to avoid paying additional class fees.
However, this will not be the case in Canada.
For applications filed on or after 17 June 2019, if the examiner decides that additional classes are necessary to cover the listed goods and services, the applicant will have no choice but to pay a class fee for each class identified by the examiner before the application can proceed to advertisement. Significantly, deleting the goods and services that are covered by the additional classes will not relieve the applicant of its obligation to pay those fees.
In other words, the payment of class top-up fees will be mandatory and cannot be avoided by deleting the goods and services in issue.
For example, if an applicant files a trademark application in Canada claiming one class, but the examiner determines that the goods and services in fact fall into 15 different classes, the applicant would have to pay class fees for 14 additional classes. Deleting the goods and services associated with the 14 additional classes will not change the payable fee of C$1,400 in additional class fees – even if the applicant amends the application to cover only one class of goods or services.
While the above example is for illustrative purposes, trademark applicants should be aware that – uniquely in Canada – the failure to properly consider the classification of goods and services at filing may result in significant and unexpected costs during trademark prosecution. In addition, trademark applicants should carefully review the breadth of their claimed goods and services at the time of filing to avoid paying additional class fees for goods and services that may not be important for their business.
Trademark owners may want to discuss these issues, among the many other upcoming changes to Canadian trademark law and practice, with qualified counsel.
For further information on this topic please contact Erica Gotfrit at Smart & Biggar/Fetherstonhaugh by telephone (+1 613 232 2486) or email (email@example.com). The Smart & Biggar/Fetherstonhaugh website can be accessed at www.smart-biggar.ca.
The materials contained on this website are for general information purposes only and are subject to the disclaimer.
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