A Deep Dive into Canada’s New Trademark Law Part 8 – Nice Classification System

Canada’s trademark law is changing, and these changes will be coming into force on June 17, 2019.  The sweeping changes which the new law will usher in are the most significant since the 1950’s.  We therefore thought it was appropriate to take a deep dive into the new legislation, to briefly outline the main areas of change, and how trademark owners will be impacted. 

 One major new feature of the new trademark law is that all goods and services will now have to be listed according to the Nice classification system, which is comprised of 34 classes of goods and 11 classes of services. The Nice classification system is a WIPO-administered, international classification system used to categorize goods and services for the purposes of trademark protection.The Office has, since 2015, informally classified all applications and registrations according to Nice, but such classifications have had no legal effect.

 In all cases, the Registrar determines which classifications will be accepted, and this determination is not subject to appeal.

 As a result of the Nice classification system, both filing fees and renewal fees will be increased, since the fees will be paid according to the number of classes covered.

 With respect to the transitional provisions, the Nice system will apply to all applications which have not been advertised as of the coming into force date of the new Act, namely June 17, 2019.

 For all trademark registrations that have issued to registration without any Nice classification, the Registrar may issue a notice under Section 44.1 of the new Act, and the owner will have six months to provide Nice classifications. If the Nice classification is not provided, the registration will be expunged. Alternatively, the registrar may refuse to renew a registration, in which case the registration will expire

 In addition to a requirement that Nice classes be provided for all applications and registrations, the Canadian Intellectual Property Office will also continue to require that goods and services be specified in “ordinary commercial terms", which will further complicate the application process.