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Canada Joins Key Trade Mark Treaties

Canada's long-awaited implementation of three key trade mark treaties took an important step in the right direction this week, as it deposited instruments of accession with WIPO. WIPO Director General Francis Gurry received the instruments of accession to the Madrid Protocol, Nice Agreement and the Singapore Treaty from Canadian Ambassador Stephen de Boer. The treaties will enter into force in Canada on 17 June 2019.

News of the accession to the Madrid Protocol will be particularly welcomed. From 17 June 2019 onwards, trade mark owners with interests in Canada will no longer have to file a separate national application in order to achieve protection in the country, but will instead be able to include Canada as a designation of an international registration.

The implementation of the Nice Agreement will bring Canada into line with the 85 contracting states who have officially adopted the Nice classification system to date, and the dozens of other countries and organisations who also use it. It will however result in an increase in filing fees, so brand owners with interests in multiple classes are encouraged to file sooner rather than later in order to make potentially significant savings. Applications filed prior to 17 June may voluntarily include the appropriate class numbers. Those that do not will be suspended until class details are provided. For existing registrations, the registry may request class details, and renewals will only be processed if the goods and services are properly classified.

The Singapore Treaty harmonises administrative trade mark registration procedures, in particular recognising non-traditional trade marks. As a result, marks such as colours, scents, tastes and texture will, in theory, be registrable in Canada. However, strict examination with regards to the distinctiveness of such marks is anticipated.

The implementation of the treaties coincides with additional changes to the Canadian Trademarks Act coming into force on the same date, which include:

  • The elimination of filing grounds. Any applicant who is using or intends to use its mark in Canada will be able to file an application.

  • Declarations of use will no longer be required. Applications will be registered upon payment of the government fee, without the need to file a declaration of use. This includes applications filed before 17 June 2019 where the current deadline to file the declaration of use falls after that date. As such, applicants who already have pending applications based on proposed use in Canada may want to keep their applications pending until after 17 June.

  • The renewal term will be reduced from 15 years to 10 years, and renewal fees will be calculated based on the number of classes. Early renewal may save costs for owners of registrations spanning multiple classes.