On January 27, 2014 the Minister of Foreign Affairs tabled five intellectual property treaties in the Canadian House of Commons. The Government will now observe a twenty-one day sitting period, expiring March 4, 2014, when Members of Parliament may debate aspects of the treaties and vote on related motions. These treaties are:
- Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol”), which provides for a centralized trade mark filing system, allowing trade mark owners to obtain registered rights in multiple jurisdictions by filing a single “home” application identifying additional Madrid countries where trade mark registration is sought. An international application is filed with an “office of origin.” The Canadian Trade-marks Office is the office of origin for persons who are Canadian nationals, are domiciled in Canada, or have a real and effective industrial or commercial establishment in Canada.
- Singapore Treaty on the Law of Trademarks (“Singapore Treaty”), which is intended to simplify and harmonize trade mark filing procedures and other formalities, while also recognizing “non-traditional” trade marks. Many of the changes encompassed in the Singapore Treaty are included in the recently proposed changes to the Trade-marks Act through the Combatting Counterfeit Products Act.
- Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (“Nice Agreement”) which standardizes descriptions of wares and services to simplify filing in various national trade mark offices. The Agreement defines 45 general classes of goods and services. Canadian trade mark law presently requires that goods and services be defined with specificity in “ordinary commercial terms”, but a single application may contain goods and/or services in multiple classes. The Wares and Services Manual sets out approved descriptions of goods and services to assist applicants in drafting their applications.
- Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (“Geneva Act”), which allows an applicant to obtain protection for industrial designs in multiple contracting party states by means of an international application similar to the Patent Cooperation Treaty, or PCT. Any person who is a national of a contracting party, is domiciled in a contracting party, or has a “real and effective industrial or commercial establishment” in the territory of a contract party is entitled to file an international application.
- Patent Law Treaty, is intended to harmonize and streamline formal procedures, although it does not limit a contracting state from regulating substantive law relating to patents. It may be possible to implement the treaty without significantly amending Canada’s existing patent legislation, as Canada’s patent statute does not contradict the requirements of the PLT. Ratification and implementation will impact Patent Office practices such as obtaining a filing date, filing electronically, form templates, and relief in respect of time limits.
If passed, these treaties may streamline procedures for Canadians to obtain international registrations for their patents, trade marks, and industrial designs. These regimes will also simplify access to Canada for foreign entities. The Madrid Protocol, Singapore Treaty and Nice Agreement each affect procedures for trade mark applications and registrations in Canada.
Treaty implementation will require amendments to the Patent Act, Industrial Design Act and Trade-marks Act, and their corresponding Regulations.