When it comes to brand protection, it pays to be proactive. The following time-sensitive strategies will help brand owners to prepare for coming changes in Canada and achieve faster, broader trademark protection at less cost.
1. Cost reduction opportunities – upcoming significant government fee increases
As of January 1, 2024, Canadian government trademark fees will jump, many by 25 per cent or more. Key examples are provided below in Canadian dollars. Note, the fees that must be paid are determined by the date on which CIPO processes the fees, not the date on which payment is filed, and this needs to be factored in when seeking to save on government fees.
- On January 1, 2024, government class-based filing fees for national applications will jump by 32 per cent, and so brand owners can reap cost savings by filing trademark applications now.
- Government fees for renewals will increase by 32 per cent, and so brand owners can save government fees by renewing registrations before the end of 2023.
- Jumping by 25 per cent are government fees to record an assignment. To save on government fees, any trademark assignments that have occurred (or will occur in 2023) should be recorded before the end of the year.
Government filing fees for online applications will increase: (a) for the first class of goods or services, over $100 from $347.35 to $458; and (b) for each additional class, from $105.26 to $139.
For trademarks registered prior to June 17, 2019, there is no restriction on how early renewal can be requested for the first renewal after June 17, 2019. For other registrations, renewal can be requested six months in advance of the renewal deadline. To save cost, generate renewal charts to identify trademarks that remain of interest and that are eligible for renewal in 2023 (including those with renewal deadlines after 2023 that fall within the foregoing categories).
Government fees for online renewals will jump: (a) for the first class of goods or services, over $130 from $421 to $555, and (b) for each additional class, from $131.58 to $173.
Government fees to record an assignment will increase from $100 per pending or registered mark to $125 per pending or registered mark.
2. Achieving accelerated and smoother examination for Canadian applications
CIPO is grappling with a significant backlog in first examination. By adopting the following filing strategies, brand owners can accelerate the examination process and reduce the risk of objections relating to the statement of goods and services or other filing requirements.
- For new national trademark applications, use pre-approved goods and services descriptions found in the CIPO Goods and Services Manual. This strategy will automatically move a national application into a queue for accelerated examination. Based on recent CIPO data1, this strategy can more than halve the wait time for first examination (from 51 months to 19 months).
- For pending national applications not currently in the queue for accelerated examination, file a voluntary amendment adopting pre-approved goods and services descriptions listed in the Goods and Services Manual.
- If currently available pre-approved goods and services descriptions are inadequate, apply to have tailored descriptions added to the Goods and Services Manual. CIPO typically reviews requests to add new descriptions within four (4) weeks. A highly proactive approach is to develop a main list of goods and services descriptions for use when filing new applications, and have all descriptions added to the Goods and Services Manual.
- Pay attention to CIPO pre-assessment notices. All national applications are automatically pre-assessed using AI to determine whether goods and services: (a) are described using pre-approved descriptions in the Goods and Services Manual, and (b) are correctly classified. While the AI pre-assessment is not perfect, the pre-assessment notice will state whether the application will be moved to the queue for accelerated examination. If not, consider steps ii. and iii. above.
- For Canadian designations in International Registrations (called “Protocol applications” in Canada), to avoid a refusal during the examination stage based on goods and services descriptions, consider “limiting” the list of goods and services in respect of Canada using pre-approved descriptions in the Goods and Services Manual. To achieve this goal, a limitation in respect of Canada could be recorded at:
- the time the International Application is filed (the list of goods and services does not need to be the same for all designated countries, but any limitation must fall within the scope of the main list of goods and services in the International Application); or
- after the International Registration is granted and notified to CIPO (the new list of goods and services resulting from the limitation must be within the scope of the Protocol application on its filing date).
- Ensure that at the time of filing, an application meets other filing requirements. For example, for trademarks that contain a word in a language other than English or French, volunteer a translation of that word. For applications that show a trademark in colour, state that colour is claimed as a feature of the trademark and include a written description of the colour claim. If the mark is to be registered without a colour claim, the application should show the trademark in black and white, and the application should specify that colour is not claimed as a feature of the trademark.
3. Compliance when using a trademark in English only in Québec (Bill 96)
Brand owners who sell products or services in the province of Québec need to be aware of changes in Bill 96 that affect when a trademark can appear in English only on products, product packaging and labelling, public signs, posters, and commercial advertising.
These changes will come into force on June 1, 2025, and although we are still waiting for regulations and further guidance from the Québec government, it is urgent that companies act now.
In short, if a brand owner wants to use a trademark in English only (without a corresponding French trademark) certain conditions must be met. One condition is that the English trademark must be registered. Importantly, if an English trademark appears on a product, product packaging or labelling and the trademark incorporates descriptive wording, the descriptive wording will need to be translated into French (even if the English trademark is registered).
Brand owners can mitigate the impact of having to change their branding in Québec by taking the following steps now.
- Review inscriptions on products, product labelling and packaging, public signs, posters, and commercial advertising used (or being developed for use) in the Québec market and identify unregistered trademarks that are used or proposed to be used in English only. File applications for these trademarks now and employ filing strategies that will help to accelerate the registration process (see above).
- Identify registered and unregistered trademarks that will be used on products, product packaging or labelling, and that incorporate descriptive wording, and for these trademarks prepare presentations of the mark that will comply with the requirement to translate the descriptive wording.
BLG has an office in Montréal, Québec, and we are happy to assist brand owners in developing tailored strategies to comply with the pending changes in Bill 96 by June 1, 2025, including those outlined above.
4. Achieving broader protection for standard character trademarks
As of June 17, 2019, it became possible in Canada to make a standard character claim for word marks and other marks that consist of letters, numerals, punctuation marks, diacritics and/or typographical symbols without any particular font, size or colour.
For such marks, a standard character claim provides the broadest scope of protection.
For applications filed before and advertised after June 17, 2019, it is possible to add a standard character claim prior to registration.
As discussed above, due to the backlog at CIPO, the registration process has not yet been completed for some applications filed before June 17, 2019. For those marks which qualify for standard character mark protection, it is a simple matter to add a standard character claim at no additional charge. The writers’ practice is to do so at the examination stage, for example when responding to an Office Action (although if a substantive objection to the registration of the mark has been raised, it may not be advisable to do so at this stage) or after the opposition stage has been completed but prior to paying the registration fee (which remains a requirement for applications filed prior to June 17, 2019).
BLG is known for providing tailored, strategic advice. Please contact us if you have any questions regarding the above strategies.
1 As of July 17, 2023, the filing dates of trademark applications being distributed to Canadian Examiners for first examination were: December 7, 2021 for applications using pre-approved goods and services descriptions vs. April 1, 2019 for applications not using pre-approved descriptions.
