As of September 28, 2015, the Canadian Trade-marks Office (“CIPO”) indicated that it accepts trade-mark applications with the goods and services grouped and classed according to the Nice Classification system. CIPO issued a Practice Notice entitled Nice Classification on September 28, 2015. Prior to September 28th, the Nice classification system was not used in Canada for filing trade-mark applications.
Canada is in the process of changing its trade-mark law, but those changes are not yet in full force. Therefore, the Practice Notice indicates that the provision of the Nice classes in the application is voluntary at this time.
If the Trade-marks Office does not agree with the classification provided by the applicant and where the trade-mark has not yet been advertised in the Trade-marks Journal, the Registrar will cause the application to be advertised without the Nice classes if no other requirements and/or objections are outstanding with respect to the application.
Of interest is the fact that the Trade-marks Office will not grant extensions of time to allow the applicant to amend its application to include the Nice classes. As well, the Trade-marks Office will not classify the goods or services for the applicant. It is the responsibility of the applicant to classify the goods and services. If the examiner disagrees with the classification, he/she will issue a report asking for the reclassification. If the examiner and the applicant cannot agree with the appropriate reclassification, the Trade-marks Office will continue to prosecute the application without the Nice classes.
The Trade-marks Office has organized a number of webinars for the public to provide assistance with the tools which are now available when filing a trade-mark application online.
When filing electronically, the applicant will be able to select pre-approved terms for the Nice classes for goods and services. These pre-approved terms can be searched online and directly added into the application. When the applicant has used the pre-approved list, these terms are deemed acceptable by the Office.
There is also a function by which the applicant can provide a list which will be classified electronically according to the Nice classification system. It is also possible to insert a custom list of goods and services into the application.
As well, the search tool at the CIPO website permits trade-mark searching by Nice classes. At the CIPO website, there is also a section dealing with “Using the Nice Classification in Canada – Questions and Answers”. Additional information on the Nice Classification, the Class Headings and Explanatory Notes can be found in the Goods and Services Manual, which is also online.
Until the changes to the Trade-marks Act come into force, providing the Nice classes is voluntary. The changes to the Trade-marks Act may be in force by the end of 2016 or early 2017, at which time using the Nice classification will be mandatory. It, therefore, may be advantageous to commence using the Nice classes now.
In furtherance of the above, the Trade-marks Journals which are published weekly on Wednesdays have been changed such that each advertised trade-mark shall have its own page. The arrangement of the information has been changed and will include any information on the Nice classes.
There have not been any changes as far as the cost of a Canadian trade-mark application. The current fee to file a trade-mark application electronically is $250.00 Cdn. for any goods and services in any classes.
