In anticipation of the upcoming changes to the Trade-marks Act (the “Act”), now scheduled to take place in 2019, the Canadian Intellectual Property Office (“CIPO”) is inviting owners of registered trademarks that are due for renewals as of January 2018 to voluntarily categorize the goods and services covered by their registration based on the Nice Classification prior to or upon renewal.
This administrative formality, which does not affect the scope of protection granted to a registered trademark, will become mandatory when the new Act comes into force.
The Nice Classification groups goods and services into 34 classes of goods and 11 classes of services. It is not intended to supersede the Act and thus, trademark owners will still be required to specify the goods and services covered by a mark in ordinary commercial terms. Until the amendments are implemented, categorization of goods and services based on the Nice Classification has no impact on government fees.
CIPO will not classify the goods or services associated with a mark automatically and it is therefore the owner or its agent’s responsibility to do so, which is a sensible approach considering that the owner of a mark likely knows its business better than anyone else.
Trademark owners should consider renewing their registrations early since in addition to requiring compliance with the Nice Classification, CIPO will be adopting a fee-class based system at the time of renewal once the new Act comes into force. Also, the term for a registration in existence before the coming-into-force date will remain at 15 years until the next renewal deadline, when it will be reduced to 10 years.
For further information on Canada’s implementation of the Nice Classification system, please contact a member of our Trademarks and Branding Team.