It's Nice to be Nice

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The Canadian Trademarks Act has undergone the most dramatic change in recent history. Canada had not been consistent with some of the international treaties governing trademark practice. The goal was to make Canadian trademarks practice more consistent with those practices in other countries. Changes include adopting a class system to group use descriptions, a class based fee structure, dropping use requirements from the application process, and new types of trademarks. Some of these changes will make things easier, some will make it more difficult and costly.

This is one of a series of posts about changes to trademarks coming on June 17, 2019. Our first post talked about new types of trademarks and last week we dug into the new requirements to prove distinctiveness for your mark.

Change #3: The class system

Canada has adopted the Nice (pronounced “niece”) class system used by most other countries. This change seems to be for no other reason than to be consistent with the practice of other countries, as it does not seem to benefit registrants in any way. While the goods and services covered by a trademark have always been listed on the application, under the new rules those goods and services must be grouped in classes. There are 45 classes of goods and services. For example, beer and non-alcoholic beverages are in class 32, clothing is in class 25, building construction and repair is in class 37. Fees will be payable based on the number of classes used – for both registrations and renewals.

What this means for you.

If the mark includes more than 2 classes of goods and services, filing fees will be higher than under the previous regime. Depending on the nature of the goods and services, and how many promotional items are being protected, it is not unusual to have 4 or 5 or more classes in an application.

It will also take more time to get the classes right when filing an application. Sometimes the class a use belongs in is obvious, but many are not. CIPO will also contact all existing trademark registrants at some time to require existing registrations to be classified.

If you are reading this before June 17, you might consider filing for new marks before then, or renewing marks before then that are not yet up for renewal to save some fees.

Next week we’ll be looking at how the existing requirement to declare use of the mark for the listed goods and services will disappear. Subscribe to our Top Ten in Tech Law newsletter to be sure to catch the rest of this series.

If you're concerned that these changes might have an impact on your business, we recommend that you contact your trademark lawyer today or contact us for a no obligation consultation.

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