Published September 22nd, 2017

In anticipation of the implementation of the Madrid Protocol and Singapore Treaty, the Canadian Trademarks Office is allowing trademark owners to voluntarily add class designations to goods and services in their registrations and applications at no additional cost, using the 11th Version (2017) of the Nice Classification (NCL).

Careful attention should be taken in doing so as we have yet to see, for example:

a) how the Canadian Trademarks Office will use the class system when assessing confusion with existing marks on the Register.  For example, will it conduct cross-class searches?

b) if the Canadian Courts will review classification as anything other than merely a search tool.

Also, people familiar with earlier versions of the NCL must be mindful that in addition to the new items added in the 11th Version (for example, nutraceuticals, fracking services) some items were moved to a different class as a consequence of on-going revisions to the list.  For example:

Medicated hand wash and medicated shampoos were moved from Class 3 to 5.
Bird houses were moved from Class 21 to Class 20.
Prayer beads were moved from Class 16 to Class 14.

Working with the NCL will not be for the faint of heart.

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