October 7, 2015
The Canadian Intellectual Property Office (CIPO) has just announced that applicants can voluntarily include Nice Classification of goods and services in new applications. The online filing system has also been modified to permit use of a drop-down menu with both suggested goods/services descriptions and Nice classes. At the same time, applicants can continue to use their own preferred goods/services descriptions and are not required to include any Nice Classification. Class fees are not yet in effect, and use of Nice class headings only are not acceptable.
In addition, CIPO has taken the step of assigning Nice classes to all existing applications and registrations without prior notice to the trademark owners. For now, such classification is informal, and applications/registrations display the following notice: The Classification data is provided for information and searching purposes only. CIPO does not warrant the accuracy of the classes assigned to the trademark. This data has no legal value of any kind.
Nice Classification will become mandatory with the implementation of amendments to the Trademarks Act, passed but not yet formally in place for all amendments. Full implementation of the amendments is expected in late 2016 or early 2017. In addition, the amendments to the Act permit CIPO to request applicants and registrants to classify their marks. These recent steps suggest that CIPO wants the Register to reflect Nice Classification as soon as possible.
While CIPO had announced its intent to implement voluntary classification some time ago, and had also indicated that it would be working on classification of marks already on the Register, the recent changes took place with only a week advance notice. A Practice Notice with specific questions and answers has been posted on the CIPO website, but many questions remain, suggesting that for now, trademark owners should proceed with voluntary classification cautiously unless applicants are certain that any classes selected fully cover all goods/services of interest and match classification used in other jurisdictions. Some points for consideration and further clarification include the following:
In addition, while the Practice Notice indicates that CIPO will not classify goods and services for applicants, in fact, all marks now on the Register, pending and registered, now have classes that have been selected by CIPO, and are not yet been approved by the applicants/registrants. All applicants/registrants are encouraged to review the assigned classes, and ensure that they accurately cover the intended goods/services, and especially cover all possible or likely goods/services associated with the marks. However, the assignment of classes without notice poses the following questions:
CIPO has held several information sessions and plans more in the next few weeks. Hopefully, these questions will be answered at these sessions, or CIPO will provide further answers in additional Practice Notices. However, for now, there seems to be several reasons to proceed carefully with voluntary classification.
Information on this website is for information only. It is not, and should not be taken as, legal advice. You should not rely on, or take or not take any action, based upon this information. Professional legal advice should be promptly obtained. Bereskin & Parr LLP professionals will be pleased to advise you.