CIPO Will Accept Applications with NICE Classifications in Fall 2015

CIPO has issued a news release indicating that it will begin accepting trademark applications filed with their goods and services grouped and classed according to the Nice Classification later this year.  This international classification standard  was established by the Nice Agreement and is administered by the World Intellectual Property Organization (WIPO).

It is not clear whether this new protocol is voluntary – in other words, the Office has not indicated whether objections will be made if goods and services are not grouped into Nice Classifications, or if the Classifications are incorrect.  Moreover, there is no word from the Office yet as to whether there will be additional filing fees required on a per class basis.

The Office has indicated that it will provide online tools to assist with the classification of goods and services, including a redesigned Goods and Services Manual that will assist in identifying the correct class, and improved search functionality that will enable users to search for marks in a particular class of goods and services.

Moving Closer to Trademark Law Harmonization – CIPO joins OHIM Database of Goods and Services

On August 25, 2014, the Canadian Intellectual Property Office (CIPO) joined the European Community Trademark Office (OHIM) database of goods and services,  TMclass.   TMclass is an online tool, with over 60,000 entries in 28 languages, that allows trademark practitioners to verify whether a particular term is acceptable in other national trademark offices.  Canada joins over 25 cooperating countries including the United Kingdom, Japan, Italy, Mexico and the United States.

The Canadian Wares and Services Manual will now include several thousand new entries classified in accordance with the Nice Agreement.  As reported earlier, it is anticipated that Canada will implement the Nice Classification system in 2015, which will require that all goods and services be grouped in accordance with the international classes.  Access to TMclass may streamline and standardize this task.

For further information, please visit the CIPO site or contact Paula Clancy.