On March 18, 2019, World Intellectual Property Organization (“WIPO”) reported to the global community of its members that it had received Canadian instruments of accession to the three major international trademark treaties (the Singapore Treaty, the Madrid Protocol, and the Nice Agreement), marking the day of accession as March 17, 2019, and the day of entry into force of the same as June 17, 2019.[1] This article will explore in more detail what this ground-breaking step in the history of global trademark regulations means to Canada and its trademark regime.
The Story and the Recent Reform.
For a few decades, the Canadian trademark landscape was limited to what the 1985 Trade-Marks Act (Canada) (the Act).[2] Since its inception, the Act has been amended a fair number of times, with most recent amendment taking place in December 2018.[3] These most recent amendments to the Act were aimed at modernizing the domestic trademark regime by joining the international trademark treaties. In doing so, Canadian businesses innovators will have the opportunity to gain access to more efficient means of protecting their trademarks in various jurisdictions around the world, whilst also considerably lowering the cost of doing so. It is hoped that such reforms will increase with the ease of doing business in Canada to the benefit of both Canadian businesses and those looking to invest in Canadian markets.[4]
Three Major International Trademark Treaties.
Looking into the history and development of the international trademark registration and protection regulatory regime reveals it would be difficult to point to the Madrid Protocol as the underlying document for such a regime. The Madrid Protocol in an archaic document that dates back 1891 and is only a few decades younger than Canada itself.[5] The question is, then, why did Canada choose to ascend only to the Protocol, while leaving behind the actual Agreement? The answer lies in a policy decision that was based on maintaining the best interest of Canadian businesses. While the Madrid Agreement calls for bureaucratic technicality, ascension to the Madrid Protocol through the Madrid System provides Canadian businesses a cost efficient trademark registration and protection mechanism internationally. This policy decision has been confirmed by the Canadian Intellectual Property Office (CIPO) as well as by the World Intellectual Property Office[6]. Canada has become the 104th country of 120 countries to join the Madrid Protocol[7].
In continuing forward with measures to modernize and improve the efficiency of Canada’s trademark regulatory regime, the Canadian government has also made a decision to join the Nice Agreement[8]. The Nice Agreement establishes a comprehensive and detailed classification of goods and service. As of June 2019, Canadian businesses will be able to access the Nice classification regime and in turn, register and protect their trademarks[9].
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