Law Times

Page 10 SePTeMBeR 28, 2015 • LaW TIMeS www.lawtimesnews.com FOCUS minimum number of classes — for example, three, the way they do it in Europe — and then an additional fee for further class- es," says Mark Eisen, a lawyer and trademark agent at Gilbert's LLP. "It's just a very easy thing to implement." Currently, lawyers file a trademark application stating what the trademark is and list- ing the goods or services asso- ciated with it. There's a general fee for any number of goods and services registered in associa- tion with a trademark. "If the government charges on a class-by-class basis, which I expect they will ultimately, then it's going to be important to get it right and to really learn the classification system so that you can use it in a way . . . to limit the cost to the client," said Isaac. The Canadian Intellec- tual Property Office says a redesigned layout and naviga- tion of the goods and services manual, as well as improved search capabilities, will pro- vide assistance in choosing the appropriate classification for goods and services while help- ing people spot overlaps in the same general category. Eisen says that, in some ways, charging per class may not be a wholly negative outcome. "There is a tendency in Canada for applicants to file these huge trademark applica- tions listing all kinds of goods — including, [for example], the kitchen sink and services in- cluding cleaning the kitchen sink — without having a serious intention to use the trademark that broadly," he says. "The Nice classification sys- tem will not impede that but it will provide an incentive to not go too far beyond what one ac- tually intends to register and use the trademark for because it will get costly," he adds. While Canada is adopting the Nice classification system, the requirements for the word- ing used to describe goods and services won't change initially, said Isaac. Currently, Canada and the United States require specific descriptions of goods and services to avoid confu- sion. If the classification system helps avoid some of that confu- sion, the specifics required in description of a trademark may change eventually, Isaac said. "If you start relying on the classification system, you might be able to go a little more broad- ly in the description." Other lawyers, however, say the classification system is likely to add to confusion when regis- tering trademarks. "The question of when trade- marks are confusing is going to start being looked at a little different because there will be products that were ostensibly unrelated in the past falling into the same international classifi- cation now," says Eisen. "That will be something people will try to argue makes trademarks more likely to be confusing. I believe there's a danger of someone finding that there's a confusion." For Eisen, the new classifica- tion system also adds one more step in the process. "This clas- sification system is going to be really more of an inconvenience than anything," he says. With the coming into force of the Nice classification system, Canada will also be embracing the Singapore Treaty on the Law of Trademarks and the Madrid protocol. Eisen says the adoption of the Madrid protocol will "set a new climate in Canada" as trade- mark owners in member coun- tries will be able to register their rights in multiple jurisdictions by filing a single application in their home countries. The Singapore treaty, on the other hand, creates more con- sistent procedures internation- ally around the registration of trademarks. "Lawyers and trademark agents will have to pay close at- tention to being able to imple- ment that system in a way that's useful to Canadian business," says Eisen. LT TF: 1.888.223.0448 T: 416.868.3100 Since 1936 Thomson, Rogers has built a strong, trusting, and collegial relationship with hundreds of lawyers across the province. As a law firm specializing in civil litigation, we have a record of accomplishment second to none. With a group of 30 litigators and a support staff of over 100 people, we have the resources to achieve the best possible result for your client. Moreover, we are exceptionally fair when it comes to referral fees. We welcome the chance to speak or meet with you about any potential referral. We look forward to creating a solid relationship with you that will benefit the clients we serve. www.thomsonrogers.com YOUR ADVANTAGE, in and out of the courtroom. (YHU\WLPH\RXUHIHUDFOLHQWWRRXUßUP\RXDUHSXWWLQJ \RXUUHSXWDWLRQRQWKHOLQH,WLVDOODERXWWUXVWZHOOSODFHG TRUST ALEKS MLADENOVIC | RICHARD HALPERN | KATE CAHILL Untitled-6 1 2015-09-23 2:56 PM New system 'more of an inconvenience than anything' Continued from page 9 'This classification system is going to be really more of an inconvenience than any- thing,' says Mark Eisen. It's fast, It's free, It's fast, It's free, It's fast, and it's available to you 24 hours a day. and it's available to you 24 hours a day. and it's available to you legal expertise? Looking for Find exactly what you need at www.CanadianLawList.com Starting a business, making a will or buying a house? Declaring bankruptcy, dealing with a personal injury, insurance claim or job loss? If you're in the midst of one of life's big events, help is as close as your smartphone, tablet or computer. Simply go to www.CanadianLawList.com to find the right lawyer for your particular legal need. www.CanadianLawList.com is Canada's most comprehensive online directory of lawyers and law firms. And it's easy to use! You can search by city, legal specialty, or name for listings and contact information. Find the legal expertise you need at www.CanadianLawList.com. Lawyers and trademark agents will have to pay close attention to being able to implement that system in a way that's useful to Canadian business.

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