Modernizing Canada's Trademarks Regime—An Overview
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CIPO is making progress modernizing Canada's intellectual property (IP) framework. Implementing widely adopted international treaties in Canada will allow businesses to be better positioned to compete globally through a cost-effective means for obtaining reliable and high quality IP rights in multiple jurisdictions. A modernized trademark regime will help Canadian businesses stay competitive in international markets by giving them an efficient means of protecting their intellectual property in various jurisdictions around the world. A regime that is aligned with other jurisdictions will lower the cost and increase the ease of doing business in Canada to the benefit of both Canadian businesses and those looking to invest in Canadian markets.
Regarding trademarks, CIPO will be signing onto three treaties: the Madrid Protocol, the Singapore Treaty and the Nice Agreement. Joining these treaties means key benefits for businesses:
- One form, one transaction, one currency, one place—Applicants can choose to apply for trademark protection in multiple countries via one application form sent to one location and paying one time in one currency.
- Harmonized administrative procedures and formalities—Similar and standardized trademark procedures in multiple countries lead to efficiencies, administrative savings and reduced compliance costs for businesses.
- Consistent goods and services classification system—Goods and services with which trademarks are used are classified consistently across multiple countries facilitating global trademark searching.
Work has started for Canada to become a signatory to these three treaties. We have updated the Trade-marks Act and reviewed user fees in the context of the changes. We are now amending the Trade-marks Regulations. The proposed changes to the Regulations have been drafted to complement the amendments that were made to the Trade-marks Act. The proposed amendments reflect requirements of the three trademark treaties while also including changes that aim to modernize Canada's domestic trademark regime. These changes simplify certain requirements, reduce administrative burden, clarify communication procedures and align trademark opposition, section 45 and geographical indication objection proceedings to better serve the needs of trademark owners and the marketplace.
Below is a general overview of the Regulations changes we are proposing in the context of trademark modernization, including the three international treaties.
The Madrid Protocol offers businesses and innovators the possibility of obtaining trademark protection in a number of countries by filing one single international application, in one language with the World Intellectual Property Organization (WIPO). One overall payment is made in one currency. This simplifies the application process and provides financial savings for local representatives seeking to obtain and maintain protection for their trademarks internationally.
The amendments to the Trade-marks Regulations related to the Madrid Protocol are meant to align Canada's processes with those of the International Bureau of WIPO. These Regulations set out the responsibilities of the Registrar as an Office of Origin with respect to the certification of applications for international registration. They also outline CIPO's, WIPO's and the applicants' roles and responsibilities when Canada has been designated as a country where the trademark owner is seeking protection and set out how the processing of international registrations will occur. One of the key goals of these provisions is to minimize the differences between a domestic trademark application and one filed through the Madrid System.
This section of the Regulations introduces
- definitions to help understand the language of the Madrid Protocol
- requirements for filing an application for international registration and its certification by the Registrar
- details regarding processing when protection has been requested in Canada
- specific requirements related to oppositions under the Madrid Protocol
- effects of the various transactions under the Madrid Protocol regarding the renewal of the international registration, owner address changes, corrections to the international register, etc.)
The Singapore Treaty simplifies and standardizes many formalities and procedures relating to the administration of trademarks. It establishes a maximum set of conditions that can be imposed on applicants, and makes procedures more user-friendly, more consistent internationally and less time-consuming for applicants. It also covers new types of trademarks, such as holograms, colour per se, and scent.
Legislative amendments are required in order for Canada to join the Singapore Treaty. The proposed provisions that extend from the Treaty include defining the date of receipt for all electronic communications; providing a single postal address for correspondence purposes; enhancing the role and responsibility of trademarks agents before the Office; standardizing the process of obtaining a filing date; and providing applicants with certain relief measures should they fail to comply with certain deadlines.
The Nice Agreement is a classification system used to categorize goods or services according to 45 general classes for the purpose of registering a trademark. The categories are harmonized across all member countries, making it easier to search for, and compare different trademarks.
As was the case for the other two trademark treaties, amendments are also required in order for Canada to join the Nice Agreement. The primary purpose of adding the classification information to the Register will be to assist in the electronic searching of trademarks. Under the proposed Regulations, applicants will be required to classify the goods or services of their trademark according to the latest version of the Nice Classification. In Canada, the Nice Classification will be implemented in such a manner that it will not have any substantive effect upon examination, on confusion, on section 45 and opposition proceedings or on other questions relating to the extent of trademark protection.
Since the fall of 2015, CIPO has been accepting trademark applications filed with goods or services grouped according to the classes of the Nice Classification. Currently, using the Nice Classification at CIPO is optional and non-mandatory until the coming into force of the Act and Regulations.
To facilitate the grouping of goods or services according to the classes of the Nice Classification for registered trademarks, CIPO has released an online tool. This service is currently voluntary and designed to support owners of registered trademarks prior to the coming into force of the Nice Agreement.
Modernization of Administrative Proceedings
Canada's trademark regime must ensure that registered owners' intellectual property is protected but not at the expense of their competitors, of consumers or of the overall good functioning of the marketplace. Opposition, section 45 and objection proceedings help maintain balance in the marketplace by providing reasonably swift and cost-effective administrative decisions. In addition to providing a dispute resolution mechanism, these proceedings also serve the overriding public interest—ensuring that only trademarks which comply with the Trade-marks Act are registered. The amendments to the Regulations related to these proceedings reflect changes required by the treaties, and amendments meant to modernize and align opposition, section 45 and objection proceedings with one another.
Some notable changes and their benefits
- providing the parties with the ability to file their evidence electronically
- facilitating the service of documents within Canada
- providing for the sequential filing and service of written representations in opposition and objection proceedings
- creating greater certainty by setting out regulatory provisions for section 45 summary cancellation proceedings at the request of a person and at the Registrar's initiative
- simplifying the procedures before the Trademarks Opposition Board by aligning the three administrative proceedings
Learn more about the proposed regulatory amendments and the consultation process
- Read the Trade-marks Regulations—Consultation Document to learn more of the details of the proposed amendments
- Review the proposed Trade-marks Regulations
- View a video information session
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