Aug 2019 Charity & NFP Law Update
As most recently reported in the June 2019 Charity & NFP Law Update, significant amendments to the Trademarks Act came into force on June 17, 2019. One of the many changes includes the requirement for applicants filing and registering trademarks with the Canadian Intellectual Property Office (“CIPO”) to classify goods and services into one of 45 classes in accordance with the Nice Classification system, which seeks to harmonize the classification of goods and services across member countries and facilitate worldwide trademark searching and filing. Importantly, each class of goods or services included in the application has a separate government filing fee attached to it.
Charities and not-for-profits filing trademark applications with CIPO are cautioned to the position that Canada has taken with regard to the payment of filing fees per class of goods and services. In particular, in various countries around the world, when an applicant files an application with classified goods and services, an examiner may issue an office action indicating that some of the goods or services have been incorrectly classified and that the application needs to be expanded to include more classes of goods or services. In that case, the applicant then has the choice of paying for each additional class identified by the examiner, or it can simply delete the particular goods or services which do not fit into the pre-existing classes, thereby avoiding paying additional class fees.
In stark contrast, the Government of Canada’s Regulatory Impact Analysis Statement states that “[i]f the examiner determines that there are more Nice classes than were identified at the time of filing, the applicant would be required to pay the additional fees.” This means that if an examiner identifies additional classes of goods or services, the applicant will be forced to pay a government fee for each additional class identified by the examiner and will not be afforded the opportunity to delete those goods or services from the application.
Given that there are 45 potential classes of goods and services, this may result in a significant increase in application costs. For instance, if an applicant files an application and includes all goods and services in one class and receives an office action indicating that the goods and services actually fall into 30 additional different classes, the applicant would be forced to pay the government fee for the 30 additional classes, which would amount to $3400. This would, of course, come as a shock to applicants.
As a result, it is very important that charities and not-for-profits work closely with their trademark counsel to carefully consider both the number of goods and services included in a trademark application, and also the classification of the goods and services in order to avoid unexpected and potentially very significant costs during the application process.