In anticipation of amendments to the Canadian Trademarks Act, CIPO is now inviting trademarks owners to categorize their goods and services according to Nice Classification.
The Nice Classification (NCL), established by the Nice Agreement in 1957, is an international system used to classify and categorize goods and services applied for the registration of marks. It is administered by the World Intellectual Property Organization (WIPO), and the latest, 11th edition, came into force on January 1, 2017.
Currently, using Nice Classification is still optional, however as of the coming into force of the new Act, NCL will become mandatory for new and existing trademarks. Consequently, we do advise all trademark applicants to file their applications by grouping their goods and services according to Nice classes, all the while respecting the current Trademarks Act’s requirement to state goods and services in ordinary commercial terms. The TM View Classification is a useful tool in comparing the terms that are harmonized with CIPO.
In addition, CIPO has announced that it has begun sending courtesy reminders to trademark owners at the end of last year. All owners of registered trademarks that are subject to renewal as of January 1st 2018, should group their list of goods and services according to the latest NCL in order to help minimize future delays in the processing of files.
In order to alleviate the processing of the large number of registered trademarks for which Nice Classification will be required prior to their renewal, CIPO is inviting trademark owners to submit Nice classes for the goods and services included in their registration.
Upon sending renewal instructions to our experts, you may also indicate that you wish to take the opportunity and classify your goods and services according NCL, and we will assist you in choosing the appropriate classes.
Vanja is a European Trademark and Design Attorney at Dennemeyer & Associates and active in IP
law since 2010. Her area of expertise is trademark and design law, international public and private
law and anti-counterfeiting. She holds a Bachelor in Communications and Law, as well as an LL.M. in
International Law and has acquired experience in various IP issues at the European Commission.
Currently, she represents and advises clients ranging from start-ups to large corporations in
trademark and design prosecution and enforcement.
The authors contribute to this blog in their personal capacity. The views expressed are their own and do not necessarily represent the views of Dennemeyer IP Solutions, Dennemeyer & Associates, or Dennemeyer Consulting.