Canadian Trademarks Office Begins to Issue Nice Classification Notices
December 28, 2016

by Philip Lapin

As we reported previously, Canadian trademark law will be significantly changed to adhere to several international treaties.  Although the timing of the changes is uncertain, it appears that the changes are likely to come into force no earlier than 2018.

Among the changes will be a requirement for all trademark applications and registrations to use the Nice classification system.  Canada is one of the few countries in the world that does not currently require the use of the Nice classification system.

In anticipation of the changes, the Canadian Trademarks Office has begun to issue courtesy notices to owners of Canadian trademark registrations, inviting them to voluntarily classify the goods and services in their registrations under Nice, before the law changes.  Because classification is not required under our current law, there is no current need to classify existing registrations.  However, once the new law comes into force, classification will be required in order for the Trademarks Office to renew any registrations.

The Trademarks Office has begun to forward these notices for registrations due for renewal in 2018.  Where a representative for service has been appointed for a registration, the Trademarks Office will forward those notices to the representative for service.  Where no representative for service has been appointed, the Trademarks Office will forward the notices directly to the owners of the registrations.

We are available as always to discuss these issues and provide advice concerning Nice classification and any other issues relating to the impending changes to Canadian trademark law and practice.

For further information regarding this new practice, please contact a member of our firm’s Trademarks group.

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.

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