Canadian Government Tables Five Intellectual Property Treaties

As previously reported, the Canadian government, without much fanfare, recently took its first formal step towards ratifying and implementing five IP treaties – The Madrid Protocol, The Singapore Treaty, The Nice Agreement, The Geneva Act and The Patent Law Treaty. The implementation of these treaties is expected to significantly change the Canadian IP landscape in the coming years. A brief summary of some highlights of the treaties follows: The Madrid Protocol provides a centralized trade-mark registration system intended to simplify the process for obtaining trade-mark rights in multiple countries. A trade-mark applicant can file a single “international application” designating specific member countries in which protection is sought. The application matures into a bundle of national registrations. Examinations and oppositions will be conducted on a national level to further define the scope of rights in each country. Follow this link for a discussion on the expected changes to Canadian trade-mark law. The Singapore Treaty is intended to harmonize certain trade-mark registration procedures. It requires trade-mark offices to accept applications for non-traditional marks, including three-dimensional marks, holograms, colour, sound, taste and feel marks. Notably, the Canadian government has already incorporated this change in Bill C-8, the Combating Counterfeit Products Act, which is currently in its final stages in Parliament. The Singapore Treaty also requires member states to provide relief measures in respect of an applicant’s failure to meet a deadline, if the failure was unintentional or occurred in spite of due care required by the circumstances. The Nice Agreement provides an extensive classification system that is designed to simplify filing and search processes. It will require applicants to specify applicable classification numbers of goods and services in official documents and publications used in connection with each registration. The Nice Agreement is not expected to change the requirement that applicants are to describe in “ordinary commercial terms” the goods and services in connection with which a mark is used. The Hague Agreement allows an applicant to file a single, international, application to secure industrial design rights in multiple countries in a similar manner to the Madrid Protocol for trade-marks described above. Interestingly, the Geneva Act will permit submission of up to 100 designs in a single application. Examination will be conducted on a national level and refusal of protection will be determined based on domestic law. Lastly, the Patent Law Treaty is intended to harmonize national formal patent application procedures. Its implementation would require the Canadian Patent Office to notify an applicant of any deficiency in a patent application for the purpose of obtaining a filing date, and provide relief measures in the event of missed deadlines in spite of due care required in the circumstances, among other changes. Follow this link for an analysis of the expected changes to Canadian patent law. Summary by: Darren Hall