The federal government has proposed significant changes to the Trade-marks Act, including one change that could eventually lead to higher costs for Canadian trademark prosecution. The proposed changes are found deep within Bill C-31 (entitled “An Act to Implement Certain Provisions of the Budget Tabled in Parliament on February 11, 2014 and Other Measures”, or more commonly referred to in the media as the “omnibus” budget bill). Although the bill is ostensibly intended to implement provisions related to the recent federal budget, amendments are proposed to a whole raft of federal legislation, including the Trade-marks Act.

Some of the proposed changes to the Trade-marks Act are relatively mundane, such as replacing “trade-mark” with the more common, non-hyphenated “trademark” and replacing “wares” with “goods”. However, other changes are much more significant.

One such change is the adoption of the Nice Classification system (also known as the International Classification of Goods and Services). Currently, Canada does not use the Nice Classification system, and Canadian trademark applications can include any number of wares (goods) or services without any additional government fees and without regard to how diverse the goods or services may be. It is not uncommon to sometimes see large numbers of goods or services listed in applications that are based on proposed use.

Under the proposed changes, applications can still include any number of goods or services, but the goods and services must be grouped according to the classes set out in the Nice Classification. The goods and services must still be stated in ordinary commercial terms. A new provision would authorize the Registrar of Trademarks to give notice to the owner of a trademark registration requiring the owner to group the goods and services listed on the registration in accordance with the classes in the Nice Classification. If the owner fails to comply, the Registrar may expunge the registration or refuse to renew it.

In many jurisdictions that use the Nice Classification (e.g. the United States, China, Europe, etc.), additional fees are required for applications with goods or services covering multiple classes. It would appear inevitable that the Canadian Intellectual Property Office (CIPO) will move towards a similar policy. Currently, the fee for filing a trademark application is $250 (if filed online), regardless of the number of goods or services. It is very conceivable that CIPO will eventually require a separate fee for each class in the application. For example, an applicant that wishes to file an application covering tomato paste and tomato sauce would find (perhaps surprisingly) that, under the Nice Classification, the application covers two classes (classes 29 and 30, respectively). This could result in filing fees that are double what would be currently payable. Although such a fee structure may discourage the filing of applications with kitchen-sink lists of goods and services, this could also result in significantly higher filing fees for trademark applicants.