CIPO Proposes a 25% Increase of Governmental Fees for 2024

The Canadian Intellectual Property Office (CIPO) is proposing to deal with its chronic financial problems by increasing governmental fees in matters of I.P. come next year. The Canadian government is thus proposing to amend the regulations relating to the costs of I.P. matters in Canada. This substantial increase, if indeed adopted, would raise the fees relating to matters such as registration of patents, trademarks, copyrights, industrial designs and trademarks.

As explained in the summary prepared by the government:

CIPO is proposing to adjust most fees by 25% over the 2024 fees to address its current structural deficit situation and return the organization to a position of financial stability. CIPO is also proposing to expand the definition of small entity while maintaining the current patent fees for small entities.

As a result, to give you an idea, the proposed increase would raison the costs associated with trademark application from $330.00 to $458.00 for the first class, and from $100.00 to $139.00 for additional classes. The costs associated with recording assignments would increase from $100.00 to $125.00, etc.

Even though this is only a proposal, it is generally agreed this is likely to sail through and indeed materialize. Come 2024, it seems probable this increase will be adopted and applied.

This is one more good reason not to wait to protect your I.P. rights if you haven’t done so already.

Time to Get Out the Garbage: Trademark Office Publishes Draft Practice Notice on Cancelling Bogus Official Marks

Canada’s trademark regime is peculiar in more way than one, including because of the existence of a peculiar type of mark called an “Official mark”. This type of registration is a kind of super mark that CIPO may grant to public authorities, a legal concept that has evolved over time, including to curb the use of this type of mark by organizations , and even business, that do not qualify.

To make a long story short, though “public authorities” aren’t necessarily governmental entities per se, jurisprudence confirmed they must somehow qualify as such, by virtue of being controlled (controllable) by the government and having activities that benefit members of the public. Though the Trademarks Office (the “TMO”) now checks against this definition when issue public marks, it did not always do so and, as a result, our trademark is cluttered with these super marks, quite a few of which are legally invalid.

The problem is made worse by the fact the TMA does not provide a time limit for public marks, so that once granted they remain on the register indefinitely, in principle.

A new section the Trademarks Act (the “TMA”) now seeks to provide some relied as to this issue, by providing us with a section akin to Section 45 through which we may get rid of deadwood on the register, and which allows easily challenging dubious official marks. In essence, the TMA now provides that anyone may challenge a bogus official mark, by flagging it for the TMO, which may then strike it from the register if it was indeed obtain without right by the entity at issue.

Recently, CIPO published a draft practice notice that sets out how submitting such a request to cancel an official mark registration will work in practice. The procedure set forth in the practice notice would require the person objecting to a registered official mark to notify the TMO, pay fees, and provide some sort of evidence that the entity holding the official mark isn’t actually a governmental (or government-related) entity. If, after inquiring, it appears the mark is indeed anomalous, then the TMO may cancel it outright.

So, we’re finally getting a way to scrap bogus official marks that have been cluttering the register for years and years. Not a moment too soon if you ask me, especially given how broad the protection afforded by the TMA to official mark is, by protecting them automatically in any and all classes of products and services, in effect!

After 3 Years of the New Trademarks Act, Registrants Should Beware of Use Requirement More Than Ever

As you may remember, in June 2019, Canada enacted a whole new version of the Trademarks Act (the “TMA”) and which did away with lots of the requirements that applicants previously has to contend with. Case in point: since then, applicants wishing to register their marks in Canada no longer have to show (or even claim) they actually used their marks, merely that they want to register them.

Unsurprisingly, this lead to more than a few organizations and businesses filing applications for marks that may not have been registrable prior to 2019, back when the Trademarks Office (the “TMO”) was concerned with confirming owners actually has used their marks in Canada. As a result, the Canadian register is now filling up with more marks, part of which do not relate to trademarks that are actually being used in association with the actual products and services listed in the application. Welcome to Canadian trademark law in 2022!

Fortunately for us, one thing the TMA still does contain (about use) is a provision granting anyone the right to question whether any given registered mark was actually used in Canada, as defined by the TMA. In essence, “expungement” proceedings, described in Section 45 of the TMA, provide that anyone who pays the applicable governmental fees may trigger an inquiry by the TMO about whether the owner of the registration at issue can demonstrate it in fact used the mark in Canada, during the previous 3 years, in association with the types of products and services listed in the registration at issue. Failing to do so, the TMO can expunge (strike) the registration from the Canadien register. Now that the new TMA has been in force for 3 years, those who wish to get rid of certain recent registrations (i.e. the applications of which were filed around 2019) may start doing so in the upcoming months and years. Consequently, it seems more than likely we’ll be seeing an uptick of the number of expungement proceedings in Canada. After all, given how cheap this is, compared to actual court proceedings, it remains one of the best tool at our disposal when confronted with a trademark registration we may want to get rid of.

Though Canada’s registration system did away with lots of formalities meant to confirm applicants actually used their marks, the use requirement is alive and well in Canada. Whatever the TMA may say, the legal basis for the existence of trademarks (registered or not) does remain “use”, in Canada. As such, though a registration is useful, it’s important to understand that our jurisdiction is not like others where registration is what creates rights in a trademark. Though one may obtain a Canadian registration without use, keeping it may be trickier. Registrants beware!