First, CIPO-approved entries have now been added to TMClass, a multi-jurisdictional database of acceptable goods and services claims maintained by Europe’s Office for Harmonization in the Internal Market (OHIM). TMClass now contains acceptable goods and services descriptions for nearly 40 different jurisdictions in 29 different languages, making it an increasingly useful resource for practitioners who are crafting IDs with an eye to minimizing or altogether avoiding local ID objections.
CIPO’s entries were added to the TMClass database on August 25, 2014, and are denoted in the database by a “CIPO – OPIC” tag.
Additionally, CIPO has now updated its own database to denote IDs that are acceptable to local authorities in the US, Japan, Korea and under the OHIM regime.
By way of background, in 2009 CIPO signed a memorandum of co-operation with the “Trilateral Partners” – a loosely organized group of jurisdictions who have worked to promote and effect harmonization in their IP registration systems over the last few decades.
The Memorandum saw CIPO join the Partners’ trademark identification project. The goal of the project was to create and maintain a list of IDs for goods and services that, if entered in an application for the registration of a trademark in any Partner country, would be accepted.
Changes to the Canadian Wares and Services Manual were made briefly in 2011 to denote terms acceptable to the Trilateral Partners; however, those changes were reversed almost immediately when CIPO concluded many terms it had added did not comply with Canadian trademark requirements.
Apparently those issues have now been resolved. Canadian Wares and Services Manual entries that are ‘Trilateral-compliant” are now denoted in the database with the use of a capital “T”.
Additionally, it appears CIPO has begun the process of assigning Nice classes to the terms contained in its database, in anticipation of Canada’s adoption of the Nice Classification system. That change is just one of many forthcoming changes to Canadian trademark practice arising from a significant overhaul of Canadian trademark law.
While the law has been passed by the federal government, it has not yet come into force – and just when the new provisions will take effect is unclear.
Notably, CIPO has not yet publicly distributed any drafts of the supporting regulations the new law requires. However, CIPO has suggested that it will consult with trademark professionals later this fall on those regulations.