New Trademark Rules In Canada And Additional Fees In The U.S.

The trademark protection regimes in Canada and the United States are undergoing significant changes in these early months of 2025.

If you read on, you'll quickly understand why:

1. In Canada, it is increasingly important to support trademark registration with use and to adjust practices in the face of new means for the registrar to discipline practices.
2. In the U.S.A., additional fees and more stringent application requirements call for more careful preparation.

On the Canadian Side, As of April 1, 2025

On April 1, 2025, new amendments to the Trademarks Regulations come into force in Canada. These changes are designed to increase efficiency and reduce abusive behavior in contentious trademark cases.

Key Changes

1. Obligation to Demonstrate Use of a Trademark

In order to obtain redress in infringement proceedings, a trademark owner must now demonstrate use of a trademark during the first three years following registration. Consequently, it is no longer sufficient to hold a registration; that registration must be supported by use in Canada to benefit from valid protection in the event of litigation.

2. New Means of Intervention for the Registrar of Trademarks

The Registrar has a number of new tools at his disposal, including :

1. Awarding fees in opposition and expungement proceedings, to limit abuse. In practical terms, a party could be required to pay costs if, for example, it makes unjustified divisional applications, cancels a hearing at the last minute or maintains unfounded arguments. Businesses that have tended to resort to such tactics will have to act with greater restraint in the future.
2. Manage proceedings more efficiently to avoid delays. In practical terms, the Registrar can adjust deadlines to synchronize related proceedings, organize a conference call with parties on the scheduling and conduct of hearings, and curb uncooperative behavior. For businesses, this means faster proceedings and potential savings in legal costs.
3. Tightening of confidentiality orders, which are considered exceptions to the public character of court proceedings and affect the possibility of rendering decisions that disclose all the relevant facts on which they are based. In practical terms, this makes it more difficult for businesses to remove sensitive information from the public record by this means when other valid measures exist, such as redactions or the introduction into evidence of less precise yet sufficient data.

3. Neutralization of Invalid Official Marks

An official mark advertised as held by an entity that is not a public authority or no longer exists can be more easily disregarded. Until now, contesting the effect of an official mark required a costly procedure before the Federal Court. Now, an administrative mechanism allows the Registrar, on his own initiative or at the request of an interested person, to issue a public notice indicating that the prohibition surrounding an official mark no longer applies. This should help clear the register of official marks that no longer serve a purpose, and pave the way for the use of this or a similar mark by a business.

4. Restriction on Additional Evidence in Federal Court Appeals

Previously, in an appeal of a Registrar's decision to the Federal Court, evidence could always be adduced in addition to that provided before the Registrar. Now, this additional evidence depends on the court's permission. A party should therefore ensure that all relevant evidence in support of its position is introduced at the outset of proceedings before the Registrar.

On the US Side, Since January 2025

On January 18, 2025, the United States Patent and Trademark Office (USPTO) completed its migration to Trademark Center, a new platform centralizing trademark filing and management, and reducing processing times. Features include automatic saving and sharing of drafts, identity verification, and restriction of certain actions according to a user's role. It is set to become a unified digital environment for trademark registration, search and other government services in this country.

This change is accompanied by the following elements:

1. System Consolidation and Application Fee Increase

1. Elimination of former forms and systems (TEAS Plus and TEAS Standard) in favor of a single basic fee of US$350 per class.

2. Increased fees for subsequent applications and designations via the Madrid system (US$600 per class, up from US$500).

2. Introduction of New Fees to Encourage Standardized Applications

1. +US$100 per class for missing or insufficient information;

2. +$200 US per class for using the free text field instead of the Trademark ID Manual to describe products and/or services;

3. +US$200 for each additional group of 1,000 characters in the free text field beyond the first 1,000.

3. Increased Costs for Maintaining Records

1. Declarations of employment increase from US$225 to US$325 per class.

2. Renewals increase from $300 to US$325 per class.

An Opportunity to reassess your approach?

This context of change should prompt companies to review their approach and some of their habits when it comes to trademark protection.

What to do Now?

1. List Your Trademarks: identify registered trademarks that are not being used, and those that are being used but are not registered.
2. Re-evaluate Filing Strategy: if a company wants to trade in several countries, it should assess the benefits of opting for the Madrid System for its trademarks, which enables multi-jurisdictional protection to be obtained via a single application, especially in a context where diversification of customer sources is sought.
3. Rationalize Applications: prepare applications to make them as compatible as possible with the range of formal requirements not only in Canada but also abroad.
4. Adapt your practices in contentious trademark matters to take account of the new powers of the Canadian Registrar and the adjustments in the management of litigation and oppositions.

In light of these developments, it may be advisable to consult a trademark law professional to optimize your methods and adapt your strategy to such new regulatory and tariff realities.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.