The Singapore Treaty, the Madrid Protocol and the Nice Agreement, and a Modernized Canadian Trademark Regime — An Overview
From: Canadian Intellectual Property Office
Canada's modernized trademarks legislative framework has officially come into force enabling Canada to accede to the Singapore Treaty, the Madrid Protocol, and the Nice Agreement
By joining the Singapore Treaty, the Madrid Protocol and the Nice Agreement, Canadian businesses and innovators now have access to efficient means of protecting their trademarks in various jurisdictions around the world. A modernized trademark regime that is aligned with other jurisdictions lowers the cost and increases the ease of doing business in Canada to the benefit of both Canadian businesses and those looking to invest in Canadian markets.
Adhering to the Singapore Treaty, the Madrid Protocol, and the Nice Agreement provides Canadian businesses with:
- 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 are classified consistently across multiple countries facilitating global trademark searching.
Modernizing Canada's domestic trademark regime also has key benefits for businesses:
- Reduced Filing Costs
Filing costs are now lower for approximately 50% of applicants.
- Lower Administrative Burden
Application and filing date requirements are simplified and streamlined. There are also increased flexibilities for error correction and a broadened scope of business for trademark agents.
- Enhanced E-Services
Improved e-filing interface for clients, including enhanced functionalities and new services.
Canada's accession to the Singapore Treaty, the Madrid Protocol and the Nice Agreement required significant changes to Canada's trademarks regime. The Trademarks Act was amended in 2014 and the new Trademarks Regulations were finalized in late 2018. CIPO also drafted new practice notices and information guides, revised the Trademarks Examination Manual and developed improved e-services for clients.
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, simplifying the application process and providing financial savings for those seeking to obtain and maintain protection for their trademarks internationally.
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.
A requirement for accession to the Singapore Treaty and the Madrid Protocol is the use of the Nice Classification, governed by the Nice Agreement. 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 and compare different trademarks.
Changes to the Trademarks Act
The Act was amended in 2014 to enable Canada to accede to the Singapore Treaty, the Madrid Protocol and the Nice Agreement, and to modernize Canada's trademark regime.
Notable amendments include:
- the introduction of new types of trademarks;
- greater flexibility in correcting errors;
- reduced evidentiary requirements in certain cases when transferring ownership;
- the ability to divide applications and merge registrations;
- the option to file evidence electronically in administrative proceedings;
- the possibility to file international applications through the Madrid System.
Changes to the Trademarks Regulations
The Regulations incorporate the requirements of the three trademark treaties, and amendments that reduce the costs and administrative burden on applicants, align the domestic trademark framework with international norms, and simplify and clarify processes and procedures.
Highlights of the new Regulations include:
- the ability to receive electronic correspondence even when the Office is closed;
- simplified application requirements;
- simplified and aligned procedures before the Trademarks Opposition Board.
CIPO has drafted resources intended to provide information and guidance on the new processes and procedures that apply since .
For more details, please consult the Resources related to trademarks legislative changes page.
CIPO has also improved its on-line services. Users now have an improved e-filing interface with new functionalities. This includes the capability to submit images in colour, and allow for a greater number of file formats, including PDF, JPEG, TIFF, and GIF. In addition, users now have the ability to amend an application and submit a Madrid Protocol application using interactive e-services.
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