The Canadian Trade-marks Office Giveth and Taketh Away

Published July 11th, 2016

One amendment to the Canadian Trade-marks Act that is expected to be implemented in 2018 dispenses with the need to file a Declaration of Use affirming sales of the goods and/or the performance of the services identified in a proposed use application in association with the applied-for trademark in the normal course of trade.

This radical change in the registration process has meet considerable opposition as many fear, inter alia, that it permits entities to include a broad list of goods and/or services, in their trademark applications when they have no intention of ever selling most of the goods or performing many of the services in Canada.

Some non-Canadian applicants are undoubtedly very happy with this coming change. However, it may not come without “a price”.

Canada is currently one of the cheapest countries in the world to file an application. It only costs $250 to file an application for any number of goods and services with a registration fee of $200. The Canadian Trade-marks Office is in consultation over fee changes and is proposing to eliminate the registration fee and charge government filing fees on a per-class basis.

Fees that have been proposed in public consultation by the Office are:

– $330 for the first class of goods or services
– $100 for each additional class of goods and/or services
– This will result in significant increases in the cost of multi-class applications.

Long term costs borne in maintaining multi-class registrations will also increase. Currently the Office charges a flat fee of $350 to renew a registration for a term of 15 years. Under the new regime, the Office is proposing to charge renewal fees of $400 for the first class and $125 for each additional class in a registration for a term of 10 years.

Beware what you ask for.

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