Canada is a rare trademark jurisdiction that does not presently require that goods and services in trademark applications be classified according to the Nice Classification System. However, that is set to change in the near future. Recent legislative amendments, though not yet in force, are poised to bring Canada on board with Nice Classification. The changes, set out in the recently amended Trade-marks Act, will make classification of goods and services mandatory in the future. While these legislative amendments were passed in the summer of 2014, they have not yet been officially enacted and the exact coming into force date has yet to be announced. As such, there is currently no set deadline to classify goods and services.
However, in anticipation of the new classification practice, the Canadian Intellectual Property Office has been permitting applicants to voluntarily classify their goods and services in recently filed and pending applications. In addition, the Canadian Intellectual Property Office has just announced that it will shortly start inviting owners of existing trademark registrations to classify the goods and services contained in their registrations according to the Nice Classification System. Courtesy notices to this effect are expected to be delivered as early as this month to trademark owners whose registrations are due for renewal on or after January 1, 2018. Where the registration lists a representative for service, the notice will be sent to the listed representative. Where no representative is listed, the notice will be sent directly to the owner.
Owners of registered trademarks are not obliged to respond to these courtesy notices at this time and there is presently no requirement in Canada that goods and services be categorized according to the Nice Classification. However, once classification does become obligatory, goods and services in existing registrations will have to be classified before the registrations can be renewed and goods and services in new or pending applications will require classification before the applications can proceed to registration.
Trademark owners who wish to pre-emptively classify the goods and services listed in their current registrations or pending applications should seek advice regarding the appropriate classification from a Canadian trademark professional. It is important to note that classification is an administrative formality only and has no impact on the scope of protection afforded to a trademark registration.