March 27, 2017

Some Nice Trade-mark (Classification) News from Canada: Application of the 11th Edition and Courtesy Letters

As international, and now many Canadian1, trade-mark applicants are aware, the Nice Classification system is an international classification or categorization system of goods and services that is administered/updated by the World Intellectual Property Organization (WIPO) and that was established by the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks2.

Use of the Nice Classification system will eventually become mandatory in Canada, upon full implementation here of various international trade-mark treaties3.

In the interim, there have been some further modest developments. The Canadian Intellectual Property Office (CIPO) announced earlier this year that for Canadian trade-mark applications voluntarily using the Nice Classification system, it now applies the 11th edition, which came into force on January 1, 20174. Applicants are, however, reminded that merely classifying goods and services according to the Nice Classification is not sufficient in Canada; Canadian trade-mark applications continue to require “a statement in ordinary commercial terms of the specific goods or services in association with which the mark has been or is proposed to be used”5. The intent of accepting trade-mark applications that voluntarily use the Nice Classification system in advance of this being a requirement is to allow trade-mark applicants in Canada to use and become familiar with the system. As this will eventually be a requirement, it is strongly advised that trade-mark owners categorize the covered goods and services using the Nice Classification, while also listing these in specific ordinary commercial terms, for all new trade-mark application filings in Canada.

CIPO also announced late last year6 that it would begin to send courtesy letters to owners7 of registered Canadian trade-marks that are due for renewal as of January 1, 2018, inviting them to voluntarily categorize the goods/services covered by the registration based on the Nice Classification prior to or upon renewal. CIPO’s goal with these letters is to begin the large task of classifying previously registered trade-marks based on the Nice Classification. While these are ‘courtesy’ letters, it is strongly advised that trade-mark owners take the time to classify according to the Nice Classification if they receive such a letter for a pending renewal, as it will eventually become mandatory. 

For questions on Canadian intellectual property law, including Canada’s evolving trade-marks regime, acquiring, registering, transferring or licensing trade-marks and copyrights, or other aspects of Canadian intellectual property law, please contact Athar Malik or another member of Cox & Palmer’s Intellectual Property & Technology team.

 


1    The Canadian Intellectual Property Office (CIPO) began to accept Canadian trade-mark applications that voluntarily used the Nice Classification system starting on September 28, 2015, see CIPO Practice Notice: Nice Classification (September 28, 2015).

2   For more details, please visit WIPO’s Nice Classification web-site at: http://www.wipo.int/classifications/nice/en/

3   Namely, (1) the above-mentioned Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, (2) the Singapore Treaty on the Law of Trademarks (a treaty that helps to set certain common procedures for trade-mark registration and licensing, so as to harmonize these between jurisdictions), and (3) the Protocol relating to the Madrid Agreement concerning the International Registration of Marks (an agreement and protocol for an international system to facilitate registration in multiple jurisdictions. This does not create an ‘international’ trade-mark, but rather a system to deal with national rights more centrally, so as to ease the administrative burden in seeking trade-mark registrations in multiple jurisdictions).

4   CIPO News: The 11th Edition of the Nice Classification and CIPO’s Goods and Services Manual (January 1, 2017).

5   Paragraph 30(a) of the Trade-marks Act, R.S.C. 1985, c. T-13.

6   CIPO E-mail to its Canadian Trade-mark News Mailing List (December 21, 2016).

7   Or to the listed representative for service, if one has been named for a particular registration.

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