Numerous Changes on the Horizon in Canadian IP Law: Five Multilateral IP Treaties on Track for Ratification

Feb 25 2014

On January 27, 2014, five multilateral treaties pertaining to patents, trademarks and industrial designs were tabled before the Canadian Parliament, thus beginning the process of ratifying and implementing these treaties. The effects could be far-reaching. No official explanation has been offered for the government’s movement on these five treaties but it is speculated that ratification of these treaties is a condition of Canada’s acceptance into the Canada – EU Trade Agreement and/or the Trans-Pacific Partnership. None of these treaties are new; they have all been discussed in Canada, inside and outside of government, for many years.

Madrid Agreement Concerning the International Registration of Marks

This agreement establishes what is commonly known as the “Madrid System”, which is an international system for registering trademarks in multiple jurisdictions. The filing of a single trademark application can be converted into registrations in all other “Madrid” countries. This allows trademark owners to register their marks in several countries by filing a single application in one jurisdiction, paying only one fee. If Canada ratifies this treaty, Canadian trademark owners will be entitled to protect their marks with a simplified system at reduced cost. As well, IP owners in other “Madrid” countries will be entitled to easily extend trademark coverage into Canada.

Singapore Treaty on the Law of Trademarks

The Singapore Treaty on the Law of Trademarks is intended to harmonize certain procedural requirements of applying for the registration of a trademark. One useful provision allows trademark applications to be divided. A trademark owner who has used a trademark in respect of some, but not all, of the listed goods or services can register the mark in respect of only those goods and services that are being sold in Canada while leaving an application pending for any goods and services that are not yet in use. This allows an owner to obtain a limited registration quickly while continuing the application in respect of future goods and services.

Nice Agreement Concerning the International Classification of Goods and Services

The Nice Agreement establishes a standardized classification system for identifying goods and services in trademark applications. This could reduce the costs and complexity of Canadian applications. Presently, goods and services must be identified in an application in their “ordinary commercial terms”. The vague nature of this requirement often results in increased complexity and costs to applicants, which should be reduced under the Nice Agreement.

Hague Agreement concerning the International Registration of Industrial Designs

The Hague Agreement establishes a registration system for industrial design that is similar to the Madrid System discussed above. As with the Madrid Agreement, the Hague Agreement would allow an applicant to register an industrial design in multiple countries by filing an application in a single country. This should simplify and reduce costs for Canadian innovators as well as those in other countries who wish to protect industrial designs in Canada.

Patent Law Treaty

The Patent Law Treaty contains a number of provisions relating to patent application procedures. These include a provision that allows any person to pay patent maintenance fees for pending applications. Presently, only the authorized correspondent is entitled to pay this fee for a pending patent application. The Patent Law Treaty also prevents patents from being invalidated for failing to meet certain formal requirements such as non-payment of fees. Canadian patent law currently invalidates pending and issued patents for failure to pay the full amount of fees on time, as well as other formal matters. It is expected that this Treaty will make it less likely that a patent or patent application could be invalidated as a result of an informality. In summary, the ratification of the five treaties referred to above alter Canadian practices in all areas of IP and harmonize Canada’s IP laws with many other countries.

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Tags: Hague Agreement, Industrial Designs, Nice Agreement, Patent Law Treaty, Patents, Trademarks