Canada’s Intellectual Property Law Firm

Canada now allows voluntary Nice classification — the beginning of significant changes to the Canadian trademark system

Until this week, Canada was one of the few countries in the world that did not have a classification system for goods and services in trademark applications.  That has now changed.

As reported previously, Canadian trademark law will be significantly revised to adhere to several international treaties, namely the Nice, Singapore and Madrid agreements.

Although the new law will not be in force for at least one year (and likely not before 2017), as of Monday, September 28, 2015, the Canadian Trademarks Office started allowing the goods and services in trademark applications to be voluntarily classified.

Although classifying the goods and services in applications should not have any impact upon the analysis of confusion, it could have an impact upon whether or not a particular application or registration is revealed in a search of the Canadian Trademarks Office database.

As of this week, when we receive instructions to file a new application and we are provided with the relevant class number(s), we will include that information when filing the application. We therefore recommend that we be provided with the relevant class number(s) for future filings.

It is worth noting that the government fee to file applications will remain the same ($250 CDN) regardless of the number of classes.  However, when the new law comes into force, the Trademarks Office is likely to charge a separate fee per class.  Accordingly, there is likely to be a significant cost savings for multi-class applications filed before the law changes.

For further information regarding this new practice, please contact a member of our firm’s Trademarks group.

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.