I’ve written before about the massive changes coming to the Canadian trade-mark system. These changes include the use of the Nice classification system (which virtually all other countries use); joining the Madrid Protocol to facilitate registration of trade-marks from owners outside of Canada; and changing the requirements that a declaration of use be filed in order to complete a Canadian trade-mark registration.
While the law to implement these changes has already been passed, the regulatory and technical structures are understandably still a work in progress.
Now, the Canadian Intellectual Property Office (CIPO) has announced that owners of recently filed and pending trade-mark applications can begin to submit classifications of the goods and services (“wares and services” under Canadian practice) under the 45 classes of the Nice classification system. The CIPO will also send courtesy notices to owners (or their registered representatives) of trade-marks that are coming due for renewal, allowing them the chance to classify the goods and services in these registrations.
Currently, classification is optional. But the CIPO seems wise to be allowing mark owners to take advantage of the option to begin making classification changes before it is a requirement under the law. This will help CIPO study their internal procedures, work out the kinks, and (one hopes) reduce the size of the incredible job of adding classifications to their entire trademark database.
From the experience of other countries that use the Nice classification system–including the United States–it will be very interesting to see how Canada manages this process. Currently, the CIPO is very particular about the precision of wares and services listed in trademark applications; much more like the U.S. and Japan, and less like Europe, the United Kingdom, Russia, Singapore, and many other countries that are “looser” in their requirements. Will Canada remain as particular and detail-focused as before, or will the move to Nice classifications, along with the adoption of some European-like trade-mark approaches (lack of a use requirement), cause CIPO to adopt a different approach?
In any case, it is good to see Canada’s efforts to harmonize their trade-mark system to a greater degree with other countries.