Canadians Play Nice…Classification that is: Canadian IP Office will begin to accept applications using international classification system starting in Fall of 2015

September 4, 2015

Canada has been somewhat of a laggard when it comes to the accession and implementation of international trade-mark treaties, but this is changing. While discussion has carried on for years, a serious push began in 2014 to implement three key trade-mark treaties:

  1. The Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (i.e. the Nice Classification, discussed below and the focus of this update),
  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).

While legislative changes to Canada’s Trade-marks Act, R.S.C. 1985, c. T-13 have been made to implement the above treaties, the changes are pending the drafting of detailed regulations that would govern how day-to-day practice would operate and, as a result, have not come into force. Concurrently, the Canadian Intellectual Property Office (CIPO) has been working to update infrastructure/information technology systems to support the many day-to-day practice changes these treaties will bring. While no fixed date for full implementation has been set, it is currently expected that it will be late 2016 or early 2017 at the earliest.
In the interim, CIPO has recently announced that, starting this fall, it will begin to accept Canadian trade-mark applications that use the Nice Classification system. The Nice Classification is an international classification (used by many other intellectual property offices around the world) of goods and services that is administered/updated by the World Intellectual Property Organization (WIPO) and that was established by the Nice Agreement. The current version of the Nice Classification is the 2015 version of the tenth edition, which came into force on January 1, 2015 (for more details, please visit WIPO’s Nice Classification web-site)
This change will allow Canadian trade-mark applicants to use and become familiar with the Nice Classification system and will assist in future registration/renewals once the international trade-mark treaties are fully implemented and using the Nice Classification regime will become mandatory in Canada. In addition, by learning to use the classification system, it will provide Canadian applicants the necessary knowledge to more easily use Nice Classification in other jurisdictions that require the use of this system. As the classification system groups goods/services, it will allow for easier searching (for registration, or policing purposes) for other marks (including potentially confusing ones) based on these classes.
This is but one of many steps leading to full implementation by Canada of the Nice Agreement, the Singapore Treaty, and the Madrid Agreement and Protocol.

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