Last week, the Canadian Trademarks Office began issuing "pre-assessment letters" for certain trademark registrations which have never been classified under the Nice Classification system.
The Nice Classification system was adopted in Canada on June 17, 2019. Since then, unclassified trademark registrations (which are registrations that issued before June 17, 2019), must be classified prior to their renewal.
The pre-assessment letters suggest Nice class(es) for the registrations. Pre-assessment letters will be issued for registrations in the following cases:
- The goods or services have not been grouped according to the classes of the Nice Classification system;
- There is approximately one year until the renewal date; and
- The Office considers classification to be easy and non-challenging. During this testing phase, while the initial analysis is automated through the use of artificial intelligence software, each case is reviewed by a Trademark Examiner. Pre-assessment letters will only be issued during this testing phase in cases where the Examiner is confident that the result of the automated analysis is accurate.
In the future, the Office plans (or at least hopes) to issue pre-assessment letters for all trademark registrations and not just for those with easy and non-challenging classification issues.
Renewal implications
Accepting the classification suggested in the pre-assessment letters has certain benefits.
Currently, if a request is filed to classify a registration, there is a delay of approximately 4-6 months before the Trademarks Office reviews the proposed classification to determine if it is acceptable. This delay can be problematic, since it is necessary to pay a renewal fee per class. If the proposed classification is rejected, the registrant may not know how much to pay by the renewal deadline.
However, the pre-assessment letters offer certainty to registered owners during the renewal process. If the classification suggested in a pre-assessment letter is adopted by the registrant, this ensures that the proposed Nice Classification will be accepted by CIPO. Accordingly, the pre-assessment letters offer a faster and possibly cheaper approach for classification and renewal of registrations.
Conclusions
While registrants can request classification that is different from that suggested in a pre-assessment letter, there is no guarantee that an alternate classification will be accepted. Accordingly, in most cases, we suspect that registrants will adopt the classification suggested in the pre-assessment letters.
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.