Could you be more specific? Nice classification in Canadian trade mark examination

Among the changes to the Trademarks Act and Regulations that came into force on 17 June 2019 was Canada’s accession to, and implementation of, the Nice Agreement. As a result of the adoption of the international classification system, the Canadian Intellectual Property Office has incorporated the requirements of the system into both its examination procedures for pending applications and its renewal processes of older registrations. Consequently, modifications have been made to the treatment of the description of goods and services, largely resulting in requests for greater specificity.

Prior to the enactment of the act, all goods and services were required to simply be described in ordinary and commercial terms, which demanded greater specification than most other jurisdictions. Under the current rules, in addition to being specified in ordinary and specific commercial terms, the specification must be sufficiently specified for the purpose of classifying the goods and services according to the Nice classes pursuant to section 30(3) of the act. In other words, where a specification may previously have been acceptable, it may now require more granular detail.

One notable area requiring further specificity is the material composition of goods. For example, where goods such as “statues” are compliant insofar as they are in ordinary commercial terms, they now must be further specified by their material in order to be properly classified. As such, “statues of non-precious metal” belong in Class 6, while “statues made of glass or porcelain” belong in Class 21. Therefore, if statues in a variety of materials are to be included in an application or registration, those goods will need to be claimed in each class based on material composition.

Similarly, where goods are sold in combination in units, such as “kits” or “gift baskets”, all of the component goods of the units may not fall within the same class, except where the combination can be classified by purpose. Therefore, while “sewing kits” would fit in a single class (26), a gift basket containing cheeses and wine would have to be specified in two classes as “gift baskets containing wine” (Class 33) and “gift baskets containing cheese” (Class 29).

The Trademarks Office also typically requires that a good or service that could fit into multiple classes should be placed in only one class according to its primary function. Nevertheless, certain goods or services can be placed in multiple classes where they genuinely have multiple uses. For example, the goods “clock radios” can be properly classified in both Class 9 (“radios”) and Class 14 (“clocks”), but “skin lotions” belong in Class 3 as cosmetics and cannot be placed in Class 5 (medical preparations) without being further specified as “medicated”. For services, they are to be classified according to their branches of activity and fields of use. Where a service fits into multiple categories, the purpose of the activity will determine class. For instance, “business planning” is in Class 35, whereas “financial planning” is in Class 36.

This complicates the requirements for the description of the goods/services and, unsurprisingly, has increased the number of objections based on the specification and classification of goods and/or services. In addition, costs for the applicant and the registrant can increase given official filing and renewal fees are now charged on a per-class basis.

In examining specifications for proper classification, applicants preparing to file trademark applications and registrants classifying their older registrations should be aware that the Trademarks Office is relying heavily on the Canadian Goods and Services Manual, as well as WIPO’s guidance materials.

The adoption of the Nice Classification in Canada has thus led to a need for greater specificity in the description of the goods and/or services.

This article first appeared on WTR Daily, part of World Trademark Review, in March 2020. For further information, please go to www.worldtrademarkreview.com.