Canada Concludes Negotiations on Trans-Pacific Partnership Agreement

Canada has concluded negotiations with 11 other countries (including Australia, Chile, Japan, Mexico, and Peru) to create the Trans-Pacific free trade zone (the largest free trade zone in the world).  The text of the Trans-Pacific Partnership (TPP) Agreement was released on November 5 2015. The TPP Agreement will need to be ratified by Canada before coming into force.

The TPP addresses aims to facilitate the protection and enforcement of IP rights.  Chapter 18 of the TPP covers IP. Parties to the TPP must cooperate by streamlining their PTO procedures and processes, exchanging search results and other information, and reducing procedural barriers.

On the Trademark front, the TPP requires signatories to allow for the registration of sound and scent marks, and to adopt the Nice Classification system.  These requirements have already been addressed in Bill C-31 (which received Royal Assent and is anticipated to come into force in late 2017, or early 2018.  The TPP also expands the protection afforded to registered trademarks, well-known marks and geographical indications, and requires stronger border measures.  Although Canada recently introduced new border measures in the Combating Counterfeit Products Act, the TPP expands on these by requiring member states to provide customs officials with the power to  initiate border measures ex officio with respect to goods under customs controls that are in transit.

The newly-elected Liberal government has indicated that it supports free trade.  Prime Minister Trudeau stated that “[t]he Trans-Pacific Partnership stands to remove trade barriers, widely expand free trade for Canada, and increase opportunities for our middle class and those working hard to join it. Liberals will take a responsible approach to thoroughly examining the Trans-Pacific Partnership.”

For further updates, please contact Paula Clancy

 

To Renew or Not Renew – Has CIPO Answered the Question?

Bill C-31, which is expected to come into force in late 2015 or early 2016, will reduce the Canadian trademark registration period from 15 years to 10 years.  As a result, many trademark owners have opted to renew their registrations early in order to take advantage of the current 15 year registration period.

CIPO  has recently announced that the following policy will be implemented for dealing with renewals during the period prior to the implementation of Bill C-31:  registrations with a renewal deadline that falls before the amendments come into force will be given a 15 year renewal period; registrations with a renewal deadline that falls after the amendments come into force will be given a 10 year renewal period.  Seems simple enough.

However, the Office has not addressed what will happen to those registrations that have renewal deadlines that fall after the amendments come into force, but that have already been renewed under the current practice (which permits renewal of a mark well in advance of the deadline).  In those cases,  the Office has already issued a renewal certificate with a 15 year term.  Will the Office revoke the renewal certificate, and issue a new one with a 10 year term?  This will create a heavy administrative burden on the Office, as well as a great deal of uncertainty for trademark owners.

In summary, if you are a trademark owner and your registration period expires beyond 2016, be aware that even if you process an early renewal of your registration, the Office may shorten your registration period to 10 years, despite having issued a renewal certificate for a 15 year period.  If your registration period expires in 2015 or 2016, then it is worthwhile to seek early renewal in the hopes the implementation of Bill C-31 will be delayed and that you will be able to take advantage of the extended 15 year period that is currently available.

For further information, please contact Paula Clancy.

Canada Moves Towards Madrid – the Harmonizing of Canada’s Trademark Laws

On January 27, 2014, the Canadian Minister of Foreign Affairs tabled five IP treaties in the House of Commons, three of which relate to trademarks, namely:

(a) the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the “Madrid Protocol”);

(b) the Singapore Treaty on the Law of Trademarks; and

(c) the Nice Agreement Concerning the International Classification of Goods and Services for the Registration of Marks (the “Nice Classification”).

According to policy on the tabling of treaties, before the Canadian Government can proceed to ratification, the Government must observe a waiting period of at least twenty-one sitting days, during which Members of Parliament can debate aspects of the treaties, before introducing the necessary implementing legislation in Parliament.  The sitting period expired on March 4, 2014, and in a show of unusual governmental stealth, the Government tabled Bill C-31, which proposes significant changes to the Canadian Trade-marks Act.  It is only after implementing legislation is adopted that Canada may consent to be bound by the above treaties.

Canada preparing for Overhaul of Trade-marks Act

The Canadian government has tabled the Economic Action Plan 2014 Act, No.1 (Bill C-31) to bring Canada’s trademark laws in line with the Madrid Protocol, the Nice Agreement and the Singapore Treaty.  Among the proposals included in the Bill are:

  • the introduction of the classification system for goods and services established by the Nice Agreement;
  • the expansion of the definition of “trademarks” to cover a “sign or combination of signs” including a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign.
  • the elimination of prior use information required upon filing (specifically, it will no longer be necessary to identify a date of first use in Canada, or details of use and registration of the mark abroad);
  • the elimination of the requirement to file a Declaration of Use in order to register a trade-mark;
  • the introduction of divisional applications;
  • the reduction of the term of registration from 15 years to 10 years;
  • the elimination of “distinguishing guises” from Canadian practice.

As reported in our earlier post, Canada has tabled a series of international IP treaties for ratification and implementation by Parliament.  The amendments proposed in Bill C-31 go hand-in-hand with the implementation of these IP treaties. 

The aim of Bill C-31 is to harmonize Canada’s trademark laws with those of the international community.  Accession to the Madrid Protocol will permit Canadians to access the international registration system.

The Madrid Protocol provides for a centralized filing system that would permit Canadian trademark owners to register their rights in multiple jurisdictions by filing a single application with CIPO, for a single fee and in a single language (English or French).  The immediate benefit to trademark owners is cost savings since a single application is easier and cheaper to file, prosecute and maintain.  The drawback of the international system for Canadians is that since CIPO requires a more restrictive description of goods and services than other jurisdictions, Canadians filing in other jurisdictions Madrid may have a more limited scope of registration than if they had filed directly in the Trade-marks Office of the foreign country.  Furthermore, international registrations are vulnerable to central attack, which means that if the Canadian application is rejected, cancelled or successfully opposed, this could result a loss of rights in other jurisdictions.

The impact of these changes on Canadian Trade-mark law and practice will be significant.  We will continue to monitor the progress of Bill C-31.