What is it?  The Nice Classification System is an international classification of goods and services used to classify goods or services for the purposes of the registration of trademarks.  It groups goods and services into 34 classes of goods and 11 classes of services.

Why do we care?  Canada is one of the few countries in the world that does not currently require the use of the Nice Classification System.  However, changes to the Trademarks Act are scheduled to take place in early 2019, some of which changes will require trademark applicants and registrants to class their goods or services according to the Nice Classification.  Both trademark applications and registrations will be required to use the Nice Classification System.

Do I need to do it now?  You do not need to class your goods and services according to the Nice Classification System at this time.  If you wish to do so in anticipation of the upcoming changes, the Canadian Intellectual Property Office currently accepts applications with goods and services grouped and classed according to the Nice Classification. Furthermore, the Canadian Intellectual Property Office is now sending courtesy letters requesting owners of registered trademarks to group and class goods and services under the Nice Classification before the law changes.  Any response to group and class goods and services under the Nice Classification is on a voluntary basis at this time, and does not affect the scope of protection of your trademark.  However, once the new law comes into force, classification will be required in order to renew any registrations.

Should I do it now? 

Trademark Registrants have the opportunity to classify the goods or services for existing registrations before they are due for renewal.  However, there does not appear to be any legal advantage in assigning the Nice Classification for a registration at this time, and as such, we suggest waiting until the new laws come into effect and your registration is up for renewal before classifying your goods and services according to the Nice Classification System.

Trademark Applicants can classify goods and service according to the Nice Classification at the time of filing their trademark application or during examination.  The Canadian Intellectual Property Office suggests that doing so can speed up the trademark registration process and subsequent renewal process. Furthermore, if you wish to register your trademark in other countries using the Madrid Protocol (when this option becomes available), the goods or services in your application will already have been classified and the Nice Classification requirements will already have been met.  Thus, there may be some procedural advantages to assigning the Nice Classification to goods and services in trademark applications.

How much is this going to cost me?  There is currently no additional cost associated with classifying the goods or services in your trademark application or registration, although when the new laws take effect, there will be additional application and renewal fees for each additional Nice class.  Government fees (excluding legal fees) for an application submitted online are currently $250CA per mark and for a renewal are currently $350CA per mark, regardless of the number of goods/services or the number of classes.  Under the new laws, the current application and registration fees will be merged into a single application fee, which is set to be $330CA for the first Nice class, plus a new fee of $100CA for each additional Nice class found in the application at the time of filing.  If the examiner determines that there are more Nice classes than were identified at the time of filing, the applicant will be required to pay the additional fees (or, conversely, could request a refund if the examiner determines there are fewer classes).  Renewal fees will also be calculated per Nice class and are set to increase to $400CA for the first Nice class, and $125CA for each additional Nice class. While there may be savings on additional class fees with early renewal of a registration before the new laws take effect, this has not been confirmed by the proposed legislation.

Need Help?

Contact our team at Parlee McLaws:

Sarah R. Ng – Calgary Office – (403) 294-7269 – sng@parlee.com

Michael Sharp – Edmonton Office – (780) 423-8697 – msharp@parlee.com