Tag Archives: cipo

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

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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%

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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.

Major Update of the Canadian Government Login Process for Businesses

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The Canadian government finally seems to have realized allowing individual agencies to create and manage credentials individually, for each business that may want to interact with governmental online services, simply does not make sense, including from a cybersecurity standpoint. Starting soon, users who want to login will have to go through a whole new system.

CIPO (the Canadian Intellectual Property Office) recently started offering information and training on the upcoming changes, so as to allow businesses to make the transition, including those that may need to interact with I.P.-related services, for example as to patents, trademarks or industrial designs.

The new system being deployed by the Canadian government will do away with ISED, the former system whereby businesses could create user IDs to login and interact with governmental online services.

The new identification process will involve each business creating an ID (called the GCKey) to which authorized individual users will have to be linked. The system will also require individuals to go through identification and authentication, to make sure they are the actual individual they purport to be and that they are indeed authorized by the organization at issue. Though you may think this was already the case, it was not.

One offshoot of this new method of allowing access by users on behalf of their organization is that it will do away with the sharing of credentials. Once implemented, it will no longer be possible for all users of an organization to “share” a single user ID (account), as was so frequently until now, for purposes of accessing governmental online services.

The new system will also force all user to use 2-step verification to login into their online account, also something most large organizations have been requiring for a while now. The actual implementation of the changes start March 28.