Trademarks legislative changes and international treaties

CIPO is making progress to modernize Canada's intellectual property (IP) framework.

The following is an overview of the trademarks legislative work that is underway to help Canada better align itself with international best practices. Take a look at the Updates to the trademarks online tools page to see which applications and forms are being adapted to better implement these changes.

Please contact us if you have any questions.

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Canadian trademarks legislative changes

Participation in the international treaties will modernize Canada's IP systems to better align with international best practices, reduce the administrative burden for innovative Canadian businesses, and draw foreign investment to Canada. It will also allow Canada to take part in discussions and influence matters related to IP on the international stage.

Three different bills with trademarks components received Royal Assent: Bill C-8, Bill C-31 (which includes accession to the Nice Agreement, the Singapore Treaty and the Madrid Protocol) and Bill C-59.  These amendments are all reflected in the modernized Trade-marks Act.

Important to know

To bring these new laws into force, we are in the process of reviewing our business procedures, office practices, policies, and informational contents. We are also working on adapting technologies such as web applications and databases and updating the Trademarks Regulations.

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Bill C-8 — Combating Counterfeit Products Act

Bill C-8, the Combating Counterfeit Products Act, provides trademark owners with new ways to protect their brands, works against counterfeit and piracy and introduces changes to the trademark registration and opposition processes.

While some changes contained in Bill C-8 have come into force, such as changes to terminology, the majority of the trademark related amendments will only come into force on a day to be fixed by order of the Governor in Council. These will be largely in line with the implementation of the amendments contained in Bill C-31.

Important to know

  • There are trademark amendments relating to CIPO and the registration of trademarks contained in Bill C-8 that are not found in Bill C-31 – Budget Implementation Act 2014. These amendments include the provisions relating to the retention of trademark records and registered users. These amendments will only come into force on a day to be fixed by order of the Governor in Council. 
  • As a trademark and/or copyright owner, you can submit a Request for Assistance application to the Canada Border Services Agency (CBSA) intellectual property rights program. The Agency has established a process that allows intellectual property rights holders to file a request asking for the CBSA to temporarily detain suspected counterfeit goods encountered at the border while rights' holders seek legal redress.

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Bill C-31 — Budget Implementation Act 2014

In Bill C-31, Canada confirmed its intention to join international trademark treaties.

Amendments to the Trade-marks Act contained in Bill C-31 are required to enable us to accede to the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement), the Singapore Treaty on the Law of Trademarks (Singapore Treaty), and the Protocol relating to the Madrid Agreement concerning the International Registration of Marks (Madrid Protocol).

Canada's accession to these treaties will modernize the trademark regime and enable us to keep pace with leading international standards and benchmarks. In turn, 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 also lower the cost of doing business to the benefit of both Canadian businesses and those looking to invest in Canadian markets.

Important to know

Bill C-31 will allow us to accede to the three treaties mentioned above. Business procedures, office practices, rules and regulations, policies, online informational contents and databases are all being reviewed and amended to ensure a smooth transition.

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Acceding to the Nice Agreement

As part of the amendments under Bill C-31, a requirement for Canada is to use the Nice Classification (formally known as the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks). Administered by the World Intellectual Property Organization (WIPO), the Nice Classification is used to categorize goods and services for the purposes of registering trademarks.

Accession to the Singapore Treaty and to the Madrid Protocol requires using the Nice Classification. 

Important to know

Since September 28, 2015, CIPO started accepting trademark applications filed with goods and services grouped and classed according to the Nice Classification.

  • Applicants and owners will be able to group and classify goods or services for both their pending and registered trademarks. 
  • Using the Nice classification at CIPO will be optional and non-mandatory until the coming into force of C-31.
  • Using the Nice Classification now provides clients and CIPO more time to start classifying before it becomes mandatory under Bill C-31.
  • Take advantage of your trademark renewals to classify your goods and services. The goods and services manual will be updated in the fall 2015 to help assist you with this exercise.

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Acceding to the Singapore Treaty

The Singapore Treaty on the Law of Trademarks, or Singapore Treaty, is a trademark law treaty that aims to make national trademark registration systems more user-friendly and to reduce business compliance costs for trademark owners.

The Singapore Treaty does not, however, seek to harmonize substantive trademark law. The majority of the standards and rules in the Singapore Treaty relate to the procedures of national trademark offices. In particular, the Treaty clarifies what national trademark offices can and cannot require from applicants.

Important to know

Ratifying the Singapore Treaty will improve Canada's alignment with its major trading partners.

Currently, there are 36 countries party to the Singapore Treaty, including the United States, the United Kingdom and Germany.

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Acceding to the Madrid Protocol

The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, or Madrid Protocol, is an international registration system that offers the possibility of obtaining protection for trademarks in a number of countries through a single international application filed with the International Bureau of the World Intellectual Property Organization (WIPO). Aligning Canada's trademark regime with accepted international standards and practices will allow easier foreign market access for Canadian firms. This will help increase competitiveness, and reduce entry barriers for foreign firms, which will lead to increased investment opportunities in Canada.

As of July 17th, 2015, there are 95 countries party to the Madrid Protocol, including all of Canada's major trading partners.

Important to know

The main advantages of the Madrid Protocol are the simplicity of the international registration system and the financial savings made by owners when obtaining and maintaining the protection of their marks abroad.

For example, an owner will have lower expenses related to translation, currency exchange fees and fees for local representatives. Under the Madrid system, a trademark owner has to file only one international application with WIPO, in one language, and pay one fee in one currency. This significantly simplifies the international trademark regime as the applicant would only need to inform WIPO of any changes to his registration, such as a change of address, and not each of the countries where he holds a registration.

As for the Nice Classification and the Singapore Treaty, CIPO will officially accede to the Madrid Protocol when Bill C-31 comes into force.

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Bill C-59 — Budget Implementation Act 2015

The changes under Bill C-59 – Budget Implementation Act 2015, aim to bring more flexibility in making corrections to IP titles and extending deadlines in cases of force majeure, such as floods or extensive power outages.

Also, the bill aims to have the courts recognize the privileged nature of the information shared between agents and their clients.

Important to know

On June 23, 2016, provisions related to privileged information between agents and their clients will be in effect.

All other trademark-related amendments under Bill C-59 come into force on a day to be fixed by order of the Governor in Council.

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