Tuesday, June 7, 2016

Update: Amendments to Canada's Trade-Mark Act

Yesterday the Canadian Intellectual Property Office posted a proposed new fee structure.  You can view it here: Proposed adjustments to the trademark and patent fees 
This is the long awaited first step towards implementation of the changes to our Trade-Mark Act.  The consultation period extends to July 5.
 

HIGHLIGHTS 

 

Fees

Application & Registration

There will be only one fee associated with the registration of a trademark.  At filing an applicant will pay $C330 ($C430 if not filed online).  This replaces the current application and registration fees ($C450).  
 
The basic filing fee will cover one Nice Class.  Each additional class will incur a further fee of $C100 per class.
 

Renewals 

The renewal fee will be $C400 ($C500 if not filed online).

The renewal fee will cover one Nice Class.  Each additional class will incur a further fee of $C125 per class.

Use 

The consultation paper affirms that there will no longer be a requirement for use of a trademark to obtain registration in Canada.  The paper acknowledges that with the abolishing of the requirement for a declaration of use, there will be many proposed use applications that "can now" be registered.

Furthermore, the paper clearly states that applications filed prior to the coming into force of the new regulations will be subject to the $200 registration fee (but presumably not the per class fee).  

Coming into Force


CIPO is now stating that the regulations implementing the new law will come into force in early 2018 and the paper confirms this in its revenues and costs estimations which start in fiscal year 2018‒19.