On September 28, 2015, the Canadian Intellectual Property Office (“CIPO”) began accepting trademark applications with goods and services classified according to the Nice Classification.  This signals the first step in a significant change to the registration of trademarks in Canada.

The proposed legislative changes relating to the classification of goods and services are not in full force yet, so for the time being classification according to Nice is optional.  One of the advantages of classifying goods according to Nice now, however, is that applicants wishing to extend their trademark into other countries using the Madrid Protocol – when this service becomes available to Canada – will already have their goods or services properly classified.

A challenge for CIPO will be adjusting its application review procedures to account for the Nice classification.  For now, if CIPO does not agree with the classification provided by an applicant, it will not issue an office action objecting to the classification (unless, of course, there are other reasons to refuse the application).  Thus, if an applicant classifies its goods and services according to Nice, the burden lies with the applicant to ensure proper classification.  Eventually, classification according to Nice will be mandatory in Canada, and as CIPO adjusts to classifying goods and services according to Nice, this practice too will change.

Another benefit of Canada adopting the Nice Classification is that it will make it easier for applicants to identify potentially confusing marks already registered or applied for in Canada, as applicants will now be able to search the Canadian trademark database for marks within a particular class of goods or services.  CIPO is already modifying its website to provide new tools for more efficacious searching of marks according to classification.

Prior to its adoption of the Nice Classification system, Canada charged a flat application filing fee of $250.  For now, this application fee has not changed, and CIPO is not charging based on the number of classes contained in the application.  There is speculation that this will change, as many other countries – such as the United States – charge fees according to the number of classes contained in the application.

There is not yet a timetable for the legislative changes taking full effect, but it is anticipated these changes will be fully implemented by the end of 2016.  Businesses and individuals interested in obtaining trademark rights in Canada should continue to monitor these changes to determine how the adoption of the Nice Classification will impact their Canadian applications.