Member Article

On January 27, 2014, the parliamentary secretary of the Canadian Minister of Foreign Affairs tabled five treaties in the House of Commons dealing with intellectual property, of which three relate to trademarks. These three treaties on trademarks are as follows:

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 Nice Agreement Concerning the International Classification of Goods and Services for the Registration of Marks (the "Nice Classification")

If ratified by Canada, these three treaties dealing with trademarks would allow Canada to align itself with most of its trade partners, and would provide definite benefits to Canadian trademark owners.

The Madrid Protocol would enable Canadian trademark owners to file applications for international registration via the Canadian Intellectual Property Office. This would simplify procedures, allowing for the filing of a single application that would be effective in many contracting countries to the Madrid Agreement or Madrid Protocol. Indeed, from the date of the international registration, the trademark would be protected in each of the designated countries as if an application for registration had been filed directly with the official trademark office in each of these countries.

The purpose of the Singapore Treaty on the Law of Trademarks is to simplify and standardize the formalities and procedures for the administration of trademarks. It provides for more user-friendly and harmonized international procedures that would save time for trademark registration applicants.

As for the Nice Arrangement, it would provide for the adoption by Canada of the Nice Classification, which is already in use by most countries for trademark registration.

Most countries that have adopted the Nice Classification require filing fees for applications calculated on the basis of the number of international classes of goods and services covered by the application. However, in Canada, it is possible that a single filing fee will set, even for multi-class applications.

There is no known timetable for the ratification of these treaties, but we will continue to monitor the process and keep our clients informed of further developments.

 

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