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.