On March 15, INTA submitted comments to the Canadian Intellectual Property Office (CIPO) on the benefits of acceding to the Singapore Treaty and adopting the Madrid Protocol. The Asia-Pacific and Canada Subcommittees of the Legislation/Regulation Committee and the Trademark Office Practices Committee and the North American Subcommittee of the Non-Traditional Marks Committee collaborated on this submission.
If Canada adopts the Singapore Treaty, the standardized procedures would assist in making Canada’s registration system more user-friendly and efficient and, it is hoped, reduce compliance expenses for trademark owners. It would also:
• Give users the ability to divide applications and correct filing and registration errors
• Eliminate the need to file a certified copy of a foreign registration
• Provide relief measures with respect to missed time limits
• Limit the registration and renewal terms from 15 years to 10 years (this should clear the register of marks that are not in use sooner than under the current system)
In its submission, INTA supports the registration of nontraditional marks that are visually perceptible, or capable of being depicted or described by written notation, diagrams or other sufficiently certain visual means, as long as these nontraditional marks are sufficiently distinctive and function as indicators of source. The Association stated that it would support any necessary legislative and regulatory amendments that might be needed to allow for the registration of other nontraditional marks, such as sounds, smells and moving images (e.g., holograms and animations).
INTA believes that the Madrid Protocol is likely to have strong appeal for Canadian businesses whose goods or services have significant export potential and companies that are eager to expand their presence overseas in at least four countries. Unlike Canada, many countries offer no trademark protection unless the mark is registered. The “one-stop” filing mechanism would allow small and medium enterprises (SMEs) to protect their brands in international markets that adopt the Madrid Protocol. SMEs would no longer have to choose between avoiding overseas markets altogether on account of the financial and legal burden of filing separate trademark applications where protection is sought or leaving their products and services vulnerable to pirates or opportunists who may register the mark with the intention of selling it back to the owner. Additionally, the “one-stop” approach would enable large Canadian companies to increase brand awareness and sales and enhance competiveness as they expand their presence into overseas markets.
INTA will be tracking CIPO’s decision-making processes on the comments and will keep members informed of CIPO’s decisions. Officials from CIPO will be attending INTA’s Annual Meeting in Boston, and the Association looks forward to following up with them regarding its submission.
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