March 1, 2010
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CANADA: CIPO Seeks Input on Possible Canadian Accession to Madrid and Singapore Treaties
The Canadian Intellectual Property Office (CIPO) recently launched a new consultation on possible Canadian accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the Madrid Protocol) and the Singapore Treaty on the Law of Trademarks (the Singapore Treaty).
This is not the first time CIPO has considered whether Canada should accede to the Madrid Protocol. A little more than five years ago a similar consultation took place. CIPO received feedback from the Intellectual Property Institute of Canada and from INTA on that occasion, though it took no further action at that time.
According to CIPO’s background paper on the current consultation, the intervening five years have seen important trading partners such as the United States accede to both the Madrid Protocol and the Singapore Treaty. As a result, according to CIPO, Canada is increasingly seen as isolated in its trademark laws and practices.
As most readers know, the Madrid Protocol permits an applicant from a member country to file an application in its home country to register a trademark and also to file an international application in which the applicant designates other member countries where the applicant wishes to protect its mark by relying on its home country application. Registration of marks covered by Madrid Protocol applications is subject to the national laws of each member country designated in the international application.
The Singapore Treaty amends and expands on the Trademark Law Treaty of 1994 and aims to simplify and standardize many formalities and procedures relating to the administration of trademarks. The treaty covers new forms of marks, such as holograms, sound marks and scent marks. As with the Madrid Protocol, the Singapore Treaty does not affect substantive national trademark laws, such as the grounds on which applications for registration may be refused.
Should Canada decide to accede to both of these treaties, one significant challenge for CIPO, brand owners and Canadian trademark lawyers and agents alike would be the adoption of the Nice Agreement concerning the International Classification of Goods and Services. A myriad of transitional issues would have to be resolved in moving from Canada’s current system of merely using descriptions of wares and services to the system used under the Nice Agreement.
Whether the benefits of these two treaties would accrue more to foreign applicants than to Canadian trademark owners remains to be seen, and this is one of the issues of interest to CIPO. Although there are notable exceptions, Canadian trademark owners tend not to file internationally as much as owners from many other developed countries, such as the United States, and those in the European Union.
CIPO has asked for comments on its consultation to be submitted by March 15, 2010. INTA’s Trademark Office Practices Committee and Nontraditional Marks Committee are submitting comments in support of Canada’s accession to both treaties.
Although every effort has been made to verify the accuracy of items carried in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2010 International Trademark Association