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Canada joins the Madrid Protocol at last!

Finally, Canada will become one of the contracting parties to the Madrid Agreement under the Madrid Protocol with an implementation date of 17 June 2019. The Madrid Protocol is a treaty providing for the international registration of trade marks and is administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO) in Geneva. Canada has joined three treaties:

  • Madrid Protocol: The Madrid Protocol is an international system for obtaining trade mark protection internationally using a single application. By joining the Madrid System, Canada becomes the 104th member of the Madrid System which currently covers 120 countries.
  • Nice Agreement: The Nice Agreement establishes a classification system for goods and services for the purpose of registering trade marks, known as the “Nice Classification”. This will bring Canada into line with the 85 countries who have currently adopted the Nice Classification system.
  • Singapore Treaty: There are currently 48 members to the Singapore Treaty which harmonises administrative trademark registration among its members. Significantly, the Treaty recognises nontraditional visible trade marks such as holograms, three-dimensional marks, colour, position and movements trade marks as well non-visible trade marks such as sounds.

    Source: Canada joins three WIPO treaties that promote the worldwide use of trademarks.
    WIPO, 20 March 2019 at https://bit.ly/2CDRXmM

    Fundamental Changes

    This will affect a fundamental change to Canada’s trade mark law in that previously trade mark applications could only be made directly with the Canadian Intellectual Property Office (‘CIPO’). The changes mean that:

    • the definition of a trade mark is broadened to included non-traditional marks (hologram, moving image, mode of packing goods, sound, taste and texture and positioning);

    • there is no longer a “use” requirement for registration when in the past the CIPO required that a mark be used in Canada before it qualified for registration;
    • the term of registration is shorted from 15 years to 10 years.

      Numerous countries are already collaborating with the World Intellectual Property Organization. Canada is the newest on the list. Here’s a table that shows the date when other countries joined the Madrid Agreement and the Madrid Protocol:



      Take Away Points:

      • Fundamental changes coming to Canada’s trade mark system;
      • These include the ability to file non-traditional trade marks for holograms, sounds, tastes, textures, holograms and moving images;
      • The primary advantage of the Madrid system is that it allows a trade mark owner to obtain in any or all member states by filing one application in one jurisdiction with one set of fees (application and registration fees processed in one payment), make amendments and renewals across all applicable jurisdictions through a single administrative process;
      • Seek the assistance of a trade mark attorney to help you with your international trade mark applications.

       

      Jaclyn-Mae Floro, BCompSc

      Contact W3IP Law on 1300 776 614 or 0451 951 528 for more information about any of our services or get in touch at law@w3iplaw.com.au.


      Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.

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