As of June 17, 2019, trademark application and renewal fees in Canada will be increasing. At the same time, Canada is adopting the Nice Classification System and the fees due will become dependent upon the number of Nice classes that apply to the goods and services identified in the relevant application or registration. For the unwary applicant or counsel, the statutory date for calculating the applicable fees creates the potential for an obligation to pay unexpected fees.
The application fee will be $330 for the first Nice class. A supplementary application fee of $100 will apply to each additional Nice class.
- For application fees, the statutory date for calculating the number of Nice classes is the application filing date.
As of June 17, 2019, the applicant is required to classify all the goods and services identified in the application according to the Nice Classification system. However, there are 45 potential Nice classes and the appropriate classification of some goods and services is not easy to determine. The system is somewhat arbitrary and open to interpretarion. (For more information on the Nice Classification system, please refer to our previous article here). As a result, differences of opinion routinely arise and the examiner can require the reclassification of goods and services in a pending application together with the payment of supplementary application fees. There is no appeal available with respect to the classification of goods and services.
Because application fees are calculated as of the filing date, applicants CANNOT later avoid the obligation to pay supplemental fees by removing certain goods and services from the application which the applicant considers less critical to its business. The application will not be approved for advertisement until all applications fees due as of the filing date have been paid.
As a consequence, applicants should be prepared for the possibility that the application fees may increase after filing. The assistance of experienced counsel should reduce the possibility and the size of such fee increases, but the risk cannot be eliminated because the Nice Classification system is open to differing interpretations.
The renewal fee will be $400 for the first Nice class. A supplementary renewal fee of $125 will apply to each additional Nice class.
- For renewal fees, the statutory date for calculating the number of Nice classes is the filing date for the renewal request.
Historically, Canada did not classify the goods and services identified in a trademark application or registration according to the Nice Classification System. As a result, the goods and services identified in most Canadian trademark registrations are not so classified. As a consequence, simply filing a request to renew an existing registration will trigger BOTH: (a) a requirement to classify the goods and services; and (b) a requirement to pay renewal fees for all the identified goods and services in the registration.
If the examiner later determines that the goods and services in the registration should be assigned to 15 classes, the payment of 14 supplemental renewal fees of $125 or $1750 will be payable before the registration will be renewed. Because the renewal fees are calculated as of the date for the renewal request, the registrant CANNOT later avoid the obligation to pay supplemental fees by removing certain goods and services from the registration which the registrant considers less critical to its business.
If a trademark registration contains a long list of goods and services, registrants would be well-advised to file an application to classify the goods and services BEFORE filing a request to renew. Such an application can be filed at any time. Once all the goods and services identified in the existing trademark registration have been assigned to a Nice class, the registrant may then elect to renew the registration for only certain classes of goods and services and to let the registration lapse with respect to others, based on its current business needs.