Canadian Trademarks Office Introduces “Pre-assessments” to Try and Curb Registration Delays

The Trademarks Office (the “TMO”) of the Canadian Intellectual Property Office (“CIPO”) recently announced it intended to keep attempting to curb out-of-control trademark registration delays, this time by introducing the automated analysis of applications as to listings of goods and services as well as to Nice classification.

From now on, applications prepared and submitted using the standard list of goods and services (that of the Manual of products and services) will essentially be given priority, over other application where associated products and services were included by free-form text or copied in from other sources. If the CIPO can confirm that an application used the standard listing and that the Nice classification of those types of items is consistent, then it will issue a letter to the applicant confirming that the application is being (somewhat) fast-tracked by being placed at the head of the cue, for purposes of examination. In the normal course of things, this will accelerate the speed at which applications using the pre-approved list of goods and services can reach registration, in Canada.

If, however, the automated analysis reveals inconsistencies (or failure to use the pre-approved list) or issues relating to the Nice classification, then the TMO’s letter will rather invite the applicant to either refile or amend the application, without waiting for examination.

To increase the proportion of applications filed using the standard descriptions, the TMO has been consistently increasing the number of entries in the Manual of products and services, which now contains more than 100,000 entries.

Though the TMO’s announcement terms this part of the new process “pre-assessment”, one should note it’s not like we can get CIPO’s input before filing an application. Rather, a new (automated) step has simply been introduced, between filing and the actual examination by a human being.

Though CIPO’s goal in implementing this change is to curb typical trademark registration delays, it remains to be seen what impact this change will have on the actual delays we’ve been experiencing in the last couple of years. This week, for example, I received such a letter as to an application I filed back in 2019 -even though this application might now be placed on top of the pile, even assuming examination is done quickly and no issue is raised by the examiner, the trademark registration at issue will have taken 3 years, not exactly something we can call timely, let alone fast.

Canada Set to Increase IP-related Governmental Fees by 25%

The Canadian Intellectual Property Office (“CIPO”) published a proposal this week to increase most governmental fees, within a couple of years, by something like 25%. Yeah, lo and behold, setting such fees in stone for decades on end doesn’t make for the most financially sound government service, what do you know?

Though we’ve grown accustomed to such fees remaining fixed in Canada (or even being slightly lowered as was the case for 2022), for years and years, CIPO is now realizing not increasing these fees over the years has turned its operations into a deficit-running operation, something that just isn’t sustainable. As a result, CIPO now has to consider a substantial increase of the fees it imposes in matters relating to I.P. protection, in Canada.

The page at issue contains a list of proposed fee increases, that include, for example in matters relating to trademarks, to give you an idea:

  • Application for the registration of a trademark: from $347.35 to $434.19;
  • For each additional class: from $105.26 to $131.58;
  • Recording of a transfer: from $100.00 to $125.00; and
  • Extension of time : from $125.00 to 150.99$.

Given this proposed increase (which in all likelihood will indeed materialize), we of course recommend to all businesses to seek to protect their I.P. assets without waiting any further.

Updating Your Branding is Fine but Watch Out for Excessive Variations of Your Trademarks

When it comes to trademarks, the reality is that businesses like to keep up with the times, including to remain desirable and relevant in customers’ eyes. As a result, though the concept of a trademark implies a fair measure of permanence, they do often evolve over time. This can lead to problems.

One such problems stems from the rule that a trademark that has been registered must, in principle, be used as is, as it was originally filed for and registered. Any change to what a trademark looks (or sounds) like may lead to an eventual court holding that the trademark now being used is no longer the original one but rather a “variation“. Such variations may jeopardize protection afforded by registrations, as such changes may break the requisite link between the original registration and the trademark itself. This may happen, for example, when two marks are shown in close proximity to one-another, when something is added or subtracted from a mark, or upon doing a redesign of a logo, etc. If it’s not done properly, the business making such a change may end-up in hot water.

The issue traces back to the fact that, in Canada, a registered must be used as shown in the registration certificate. After all, it stands to reason that you may not register X and then use Y, and expect to benefit from your registration, as a registrant normally would. Rather, when a discrepancy crops up, courts may find that the registration at issue no longer applies to use of the trademark actually being used by the business (and vice-versa), because the link between the mark and the corresponding registration has been severed, so to speak.

Though our courts do allow some changes to their marks by trademark owners, we now impose limits on how far businesses can take these “variations”. For example, the new mark should not mislead or become prejudicial to members of the public, nor should it result in what the average person would consider a new mark altogether, as opposed to making changes that are sufficiently limited so that the original mark is still recognizable. If the changes are seen as too substantial, then courts may conclude that what is now being used is actually a new mark that sufficiently differs from the original one to justify holding the two are (legally) distinct.

If and when this happens, trademark owners may lose the benefit of the shield that affords a trademark registration, in addition to risking having the original trademark registration stricken because the mark it relates to is no longer in use.

To avoid problems such as these, trademark owners should periodically reassess whether their trademark registrations are adequate or sufficient, and determine whether new trademark applications should be filed, including to cover recent variations of their trademarks.

Sure, to your marketing department this may be a simple redesign of your logo, but to an eventual judge, it may actually result in a brand-new trademark (no pun intended).