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Canadian Trademark Law to Implement Guidelines of The Madrid Protocol

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Canadian Trademark Law to Implement Guidelines of The Madrid Protocol Aquilina Law August 17, 2021

Canadian Trademark Law to Implement Guidelines of The Madrid Protocol

Canada has been actively involved in the negotiation and ratification of several international treaties with trading partners worldwide. Many of these agreements – such as the Madrid Protocol, the Transpacific Partnership, and CETA – touch upon intellectual property regulations such as registrations and application for protection of intellectual property like trademarks, geographic indication, and traditional specialties.

Amidst Canada’s inclusion in the Madrid Protocol, the Canadian Intellectual Property Office (“CIPO”) is seeking to ensure Canadian trademark regulations are in line with the Protocol’s guidelines. Upon joining the Madrid Protocol, applicants in Canada will be able to file applications with the World Intellectual Property Association and gain access to over 100 signatory countries. This will make the process of applying for foreign registrations simpler and more cost efficient for trademark owners registered in Canada.

Starting June 17, 2019, CIPO will expand the concept of trademark as well as what types of marks can receive protection. Currently, Canadian trademark law only permits registration of traditional marks such as word and design marks, and distinguishing guises. In the near future, marks such as non-traditional shapes, smells, textures, three dimensions or moving images, among other non-traditional marks, will also receive trademark protection through registration.

CIPO’s changes will also affect the registration process, which will now reflect the international standards set out in the Madrid Protocol. It will soon be mandatory for trademark applications to be classified among 11 classes of services or 34 classes of goods, as specified in the Nice Classification system implemented by the Madrid Protocol. Likewise, from June onwards, registration will be valid for ten years instead of fifteen. The same rule will apply for renewals, which will also be for ten years.

Previously, every application needed to include proof that the trademark was: (a) being used or had a proposed use in Canada; or (b) was being used in other countries with some recognition in Canada; or (c) was being used and there was an application or registration in other countries. After the changes come into force, applications for trademark will not require the filling of declarations of use as the “use” requirement will be waived. Therefore, applicants who intend to use their trademark in the future but haven’t yet had the chance to use it in association with goods or services will now be to able file an application in Canada.

This article is for informational purposes only and does not constitute legal advice. If you wish to seek legal advice, contact Martin Aquilina today.

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