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Fee-for-service proposal – Trademarks
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From: Canadian Intellectual Property Office

A) Why is CIPO proposing changes to its trademarks schedule of fees?

The ability to enforce an IP right issued in a country essentially ends at its border. Applicants wishing to expand beyond their domestic market and register a trademark in more than one country are faced with a multitude of laws, procedures, fees and forms. These requirements can be especially onerous and discouraging to smaller businesses that may not have the expertise or the resources to deal with multiple IP offices (IPOs).

It is with this situation in mind that WIPO has fostered the development and implementation of IP treaties that promote the protection of IP across multiple jurisdictions. WIPO is an agency of the United Nations headquartered in Geneva, Switzerland, and of which Canada is a member. It serves as a global forum for IP services, policy, information and collaboration.

In an attempt to facilitate the acquisition of IP rights like trademarks, WIPO has helped negotiate several treaties that seek to harmonize the administrative practices of IPOs such as CIPO. These treaties also help reduce the administrative burden borne by an applicant by dictating what IP offices can and cannot require from applicants.  

WIPO has also created centralized registration systems that allow applicants who wish to secure an IP right in multiple jurisdictions to do so through a single application filed with the International Bureau of WIPO. Not only are applicants spared from having to file multiple applications, they also benefit from simplified administrative procedures as described below.

Trademark treaties

There are three WIPO treaties related to trademarks to which Canada is seeking to accede. These are:

Both the Singapore Treaty and the Madrid Protocol present clear benefits to Canadians applicants. Specifically, these agreements are especially beneficial to businesses seeking to expand their activities to other countries. In the case of the Singapore Treaty, not only will applicants be required to comply with fewer administrative requirements, but the harmonization of requirements will also minimize the potential for mistakes on the part of applicants who may be unfamiliar with the rules and procedures of a foreign IPO. As for the Madrid Protocol, applicants will be spared from having to file multiple applications and will save themselves the time and cost of having to translate documents and obtaining foreign currencies to pay fees. Instead, WIPO accepts documents filed in English, French, or Spanish and requires that fees be paid in a single currency, the Swiss francs. Adherence to the Madrid Protocol also facilitates the management of an international trademark portfolio. Administrative tasks like renewals or address changes are done once through WIPO instead of having to communicate with each IPO where a trademark is registered.

By joining the 38 countries that are currently members of the Singapore Treaty and the almost 100 countries that are members of the Madrid Protocol, Canada will be aligning its trademark framework with those of its major trading partners. Furthermore, accession to these treaties will facilitate foreign trademark filings into Canada, helping make Canada a more attractive destination for foreign investments. This will ultimately encourage foreign companies to bring innovations to market more quickly, to the benefit of Canadian consumers.

Changes to Canada's trademark regime triggered by the treaties

In order for any country to join the trademark treaties mentioned previously, its legislation and regulations must comply with all of the requirements of each treaty. For Canada, whose trademark legislation was last significantly modernized in the 1950s, this required alignment represents a significant overhaul of the trademark regime but also provided an opportunity to modernize some elements of the Trade-marks Act and Trade-marks Regulations as well as to eliminate requirements that no longer served a purpose in an increasingly globalized marketplace.

While some elements of the treaties are very specific and prescriptive, leaving little to no leeway in how to implement, others allow for IPOs to implement in a way that best fits their legal and market environment. When faced with the opportunity to choose how best to implement certain requirements of the treaties, CIPO kept the following goals in mind:

It is important to note that not all of the changes to Canada's trademark regime required to implement the treaties will have an effect on CIPO's fee structure. This section focuses on two proposed changes detailed below which require a review as dictated by the UFA.

Merging of the application and registration fees

Currently, applicants must pay a filing fee when they submit their application to CIPO (the application fee). The next fee payable is the registration fee, which must be paid after an application has been allowed, that is: 1) when the pending trademark has been examined by CIPO and complies with all of the requirements of the Trade-marks Act and Regulations, and 2) the trademark has been advertised and no opposition has been filed, or the opposition has been decided in favour of the applicant. Only when the registration fee has been paid will a trademark be registered.

Maintaining the current registration fee after the implementation of the Madrid Protocol will prove problematic. Since payment of the registration fee is a requirement for registration, it would require CIPO to notify WIPO at the end of the process that a registration fee must be paid by the applicant. WIPO would, in turn, inform the applicant of this required fee, obtain the fee from the applicant and transmit the fee to CIPO. This would not only delay registration but could confuse foreign applicants who may not realize that additional fees have to be paid in the case of designating Canada in an application. This approach clearly goes against the spirit of these treaties, which seek to simplify administrative procedures and facilitate international trademark filings. For these reasons, it is proposed that the application and registration fees be merged into a new application fee. This approach not only reflects the practice in 95 of the 97 current members of the Madrid Protocol, but also aligns with all of our major trading partners, with the exception of Japan.

Implementation of the Nice Classification

Current Canadian trademark law requires that all trademark applications contain a list of specific goods and/or services for which the trademark will be used. If the application is approved, the resulting registered trademark will only apply to the goods and/or services included in the application. Applicants are encouraged to refer to the Goods and Services Manual (which contains a representative list of acceptable goods and services). This listing is not meant to be exhaustive, but rather indicative of the goods and services that CIPO will accept without requesting further information. The current list is searchable in the form of a database and is completely classified according to the Nice Classification system.

The Nice Classification is a WIPO-administered, international classification system used to categorize goods and services for the purposes of trademark registration. The Singapore Treaty requires that the goods and services listed in trademark registrations be grouped and classified in accordance with the Nice Classification.

The Nice Classification consists of a list of 34 classes for goods and 11 classes for services. The class headings describe the types of goods or services that belong to the class. For example: class 15 is “musical instruments” while class 25 is “clothing, footwear and headgear.”

By having Canada adopt the Nice Classification, Canadian applicants seeking trademark protection abroad will find that drafting an application will be easier since the goods and services should be classified the same way in all member countries. Also, because the classification exists in several languages, it will be much easier for applicants to file for trademark protection internationally. Since the Nice Classification is recognized and used by many countries, applying for trademarks internationally will become easier and can be done more efficiently.

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