Filing in Canada and Japan: A Side by Side

Canada and Japan come up together often, usually because a brand is expanding across the Pacific and wants both in the same budget cycle. They are both Nice Classification countries, both Madrid Protocol members, and neither makes you prove use before you register. Underneath that, they work quite differently, and the differences change what you pay and when you can be challenged.

Here is the comparison, office by office.

At a glance

What you pay in Canada

CIPO charges CAD 491.06 for the first class and CAD 149.04 for each further class, all payable at filing. There is no separate registration fee, so the filing fee is the whole official cost of getting to a registration if nothing goes wrong.

Those figures are indexed and adjusted each January, so a quote given in November may not hold in February. If you are planning a multi mark program across a year boundary, budget the current figures plus an allowance rather than treating them as fixed.

Two other official fees worth knowing: opposing somebody else's application costs CAD 789.43, and recording a change of ownership costs CAD 150.

What you pay in Japan, in two stages

Japan splits the cost. At filing you pay ¥3,400 plus ¥8,600 for each class. That is deliberately small. The larger payment comes only after the JPO decides to allow the mark, when you pay a registration fee of ¥32,900 per class to have it entered on the register.

This has three practical consequences:

• Your money is not committed upfront. If the application is refused, you never pay the registration half.
• The real per class cost in Japan is the sum of both stages. Comparing Japan's filing fee alone against Canada's makes Japan look far cheaper than it is.
• Class discipline pays twice. Every class you add costs you at filing and again at registration.

Opposing a Japanese registration costs ¥11,000 for the first class and ¥8,000 for each further class. Recording a transfer costs ¥30,000.

Examination: what each office is strict about

Canada. CIPO examines for registrability and for confusion with earlier marks, and it is notably strict about how goods and services are described. Terms have to be specific and stated in ordinary commercial language. "Clothing" will draw an objection where "t-shirts, jackets, and trousers" will not. CIPO publishes a Goods and Services Manual of pre approved terms, and using them is the single most effective way to avoid an examiner's report and the delay that comes with it.

Canada is the slower of the two offices to issue a first examination result, and it has been for several years. Build that into any launch plan that depends on having a registration in hand.

Japan. The JPO also applies narrow readings to specifications, and Japanese practice ties acceptable wording closely to the class. A specification drafted broadly in English and pushed into Japan through a Madrid designation is a common source of objections.

Japan adds a second consideration that Canada does not: script. Your mark may be read, spoken, and searched in katakana as well as in Latin characters. Deciding whether to protect a katakana version, and how a Japanese consumer will pronounce your name, is part of the filing decision rather than an afterthought. The JPO also offers accelerated examination in defined circumstances, which is worth asking about where you have a launch date.

Opposition: before registration in Canada, after it in Japan

This is the structural difference that surprises people.

In Canada, an accepted application is advertised, and third parties have two months from that advertisement to oppose. The mark does not register until any opposition is resolved. You know before you are registered whether anybody objected.

In Japan, the mark registers first and is then published. Third parties have two months from publication of the registration to file an opposition. So you can hold a Japanese registration and still be opposed. The registration stands unless the opposition succeeds, but the certificate on your wall is not the end of the window.

Neither system stops you from being challenged later. Both allow invalidation and non use actions well beyond the opposition window.

Use: neither office needs it upfront, both take the mark away without it

Canada removed its use requirement in 2019. You do not file evidence of use to register, and you do not file a declaration of use. Japan has never required use at filing either.

In both countries, that leniency is balanced by a non use mechanism. In Canada, a registration can be challenged and summarily cancelled if the mark has not been used in the three years before the challenge, and the burden of showing use falls on the owner. Japan has an equivalent non use cancellation trial on the same three year measure.

The practical rule for both: file for what you will actually sell, keep dated evidence of sales, packaging, invoices, and advertising from the moment you enter the market, and do not pad the specification with classes you will never trade in. Padding is not free in either country. It costs at filing, it costs again at renewal in Japan's case, and it hands a challenger an easy target.

Renewal

Both registrations run for ten years and both renew in ten year blocks, indefinitely, as long as the renewal is paid. Japan allows the registration fee to be paid for a shorter term rather than the full ten years, which spreads the cost but requires a second payment part way through.

Renewal pricing is quoted as an all in figure rather than an office fee, so see trademark renewal for what each country costs to keep alive.

Madrid or direct

Both countries are Madrid Protocol members, so you can reach both by designating them from a single international application based on a home registration.

Madrid works well when your home specification maps cleanly onto both markets, you want one renewal date and one owner record, and you are entering several countries at once rather than just these two.

Direct filing works better when you need a specification tailored to each office, particularly for Japan, where a locally drafted list often avoids an objection that a translated one would trigger. Direct filing also avoids the five year dependency on your home mark that comes with an international registration.

A common middle path is to designate Canada through Madrid, where the main risk is CIPO's wording requirements, and to file directly in Japan with a locally drafted specification. See international trademark filing for how the routes compare on cost.

An order of operations that works

1. Clear the name in both markets first. Search Latin characters and, for Japan, likely katakana renderings. Start with a free trademark check.
2. Write one master specification, then localize it twice: ordinary commercial terms from CIPO's manual for Canada, JPO aligned wording for Japan.
3. File in the market you are most sure of, then use the six month Paris Convention priority window to file in the other and keep the first filing date.
4. Decide the Japanese script question before filing, not after your distributor tells you how customers pronounce the name.
5. Diarize both windows. Canada's opposition period runs from advertisement, Japan's from publication of the registration. They are not the same event.
6. Start collecting use evidence from your first shipment into each country, in the local language where you have it.

For the full country by country detail, see the Canada guide and the Japan guide.

Sources

• Canadian Intellectual Property Office
• Japan Patent Office
• WIPO: Madrid System