Canada’s Intellectual Property Law Firm

Nice Classification with a trap – Canada introduces “class top-up” fees with no back door

With the long awaited changes to the Canadian Trademarks Act and Regulations just around the corner, brand owners should be excited about Canada’s alignment with international trademark standards and the new opportunities these changes will bring. 

Among the changes coming into force in Canada on June 17, 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 categorizes goods and services into 45 general classes that are (more or less) harmonized 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.

In Canada, as in other countries, the Trademarks Office will charge a separate fee per class, where the number of classes will depend on the types of goods and services listed in the trademark application.  The government filing fee will be $330 CAD for the first class and $100 CAD 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 June 17, 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 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 $1400 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.  Additionally, trademark applicants will want to 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, please contact a member of our firm’s Trademarks group.

 

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.