Canadian Trademarks Office to Send out Courtesy Nice Classification Notices

Canada is gearing up to its adherence to the international treaties affecting intellectual property law. With such adherence will come significant changes to Canadian trademark law, which will bring the country in line with many internationally observed common practices.

Among the anticipated changes of note is the requirement for all trademark applications and registrations to use the Nice Classification System. This is significant for Canada because it is one of the few jurisdictions that does not already require the use of this System. In Canada, there currently does not exist the requirement to classify existing registrations; under the new changes, in order for the Trademarks Office to renew any registrations, classifications will be mandatory.

As a result of these changes – anticipated to come into force by 2018 – the Canadian Trademarks Office has started to issue courtesy notices to owners of Canadian trademark registrations. These notices are being handed out to registrations that are due for renewal in 2018, thus giving owners the opportunity to voluntarily classify their existing registrations of goods and services under the Nice Classification System ahead of time. For recently filed and pending applications, the Canadian Intellectual Property Office is also permitting voluntary classification.

These changes have been set out in the recently amended Trade-marks Act, but there does not yet exist a deadline to classify or obligation to respond to the Trademarks Office’s notices. However, once the Nice Classification System does become mandatory, goods and services in existing registrations will then have to be classified before the registrations can be renewed; similarly, new or pending applications will then require classification before registration of the applications.

These changes will, in effect, bring Canadian trademark practices in line with the Nice Classification System. The above-mentioned notices are set to be delivered to trademark owners whose registrations are due for renewal on or after January 1, 2018.

• Where a representative for service has been appointed for a registration, the notice will be sent to the listed representative for service;

• Where no representative has been appointed or listed, the notice will be sent directly to the owner of the registrations.