Backgrounder on launch of public consultations on amendments to the Trade-marks Regulations

The Government of Canada is moving to modernize Canada's intellectual property (IP) regime and join five international IP treaties: the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the Madrid Protocol), the Singapore Treaty on the Law of Trademarks (the Singapore Treaty) and the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (the Nice Agreement) for trademarks, the Hague Agreement Concerning the International Registration of Industrial Designs (the Hague Agreement) for industrial designs, and the Patent Law Treaty for patents.

Canada's accession to these treaties will modernize the trademark regime and enable Canada 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 IP in various jurisdictions around the world. A regime that is aligned with other jurisdictions will also 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.

In February 2017, the Canadian Intellectual Property Office (CIPO) conducted technical reviews of the draft regulatory amendments with small groups of expert stakeholders. Feedback received during these sessions was incorporated prior to broader public consultations that were held from June 19 to July 21, 2017. To the extent possible, CIPO captured additional changes in the draft Trade-marks Regulations to address comments raised by stakeholders. In addition, CIPO plans to address other comments via practice notices and other guidance documents.

The proposed Regulations are published in Canada Gazette, Part I, for a 30-day period for public comment between February 10, 2018 and March 11, 2018. We encourage Canadians to provide comments on the draft Regulations  as we finalize the Regulations for publication in Canada Gazette, Part II.

Benefits of acceding to the Madrid Protocol, the Singapore Treaty and the Nice Agreement

The Madrid Protocol governs an international trademark registration system that allows applicants to seek protection in multiple countries through a single application, filed through the International Bureau at the World Intellectual Property Organization.

The Singapore Treaty is a trademark law treaty that simplifies and standardizes the administrative requirements and procedures of the trademark offices of member countries; however, it does not cover elements of substantive trademark law (e.g. whether a trademark distinguishes the owner's goods or services from those of others).

The Nice Agreement governs a standardized classification system for goods and services applied for the registration of trademarks (the Nice Classification). Both the Singapore Treaty and Madrid Protocol require use of the Nice Classification.

Modernizing the domestic trademark regime

The proposed Regulations would also help to modernize Canada's domestic trademark regime by updating, clarifying, codifying and improving aspects of the regulatory framework, including:

These changes simplify certain requirements, reduce administrative burden, clarify communication procedures and align the different types of administrative proceedings before the Trademarks Opposition Board to better serve the needs of trademark owners.

A detailed description of the amendments is provided in the Regulatory Impact Analysis Statement (RIAS).

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