CIPO committed to keeping Madrid accession on the agenda


Currently, Canada remains the only industrialized country not a member of either the Madrid Agreement or the Madrid Protocol. While Canadian reservations persist, it is clear that with the recent accession of the United States and the European Union, the protocol has become a practical and global alternative to national trademark registration regimes.

In Canada, little formal public discussion and government action on the Madrid Protocol has occurred since 2005, when the Canadian Intellectual Property Office (CIPO) requested comments from the public relating to its proposed modernization of the Canadian Trademarks Act, which includes the adoption of the Trademark Law Treaty and the Madrid Protocol. Nevertheless, there has been movement with respect to Canada's involvement in international trademark law matters, and in particular, Canada's accession to the Singapore Treaty on the Law of Trademarks, an accord dealing primarily with procedural features of trademark registration and licensing on March 28 2006. This action is viewed by some as indicative of Canada's determination to become increasingly more relevant on the international IP stage and as a signal to Madrid members that its participation in the protocol is to be anticipated.

Canada's march to becoming a member of the protocol has been slowed by its recent history of minority governments. Accordingly, as indicated in June 2007, CIPO has found it difficult to spur parliamentary awareness and consideration with respect to the Madrid Protocol. Thus, it remains an issue of low priority. However, CIPO's intention remains to continue to cooperate with the public and endeavour to direct Parliament's attention to the perceived benefits of ratifying the Madrid Protocol.

At present, the main issues in discussions regarding possible Canadian adherence to the Madrid Protocol remain:

  • the adoption of a formal classification system for goods and services by way of the Nice Agreement;

  • the amending of current trademark 'use' requirements; and

  • the administrative changes and the costs of implementation.

A current benefit of the Canadian system is the relatively inexpensive regime of government fees. Since goods and services are not categorized by class, there is only a single government filing fee regardless of the number of goods or services covered by an application, or the number of international classes into which they fall. That would likely change dramatically with the adoption of the Madrid Protocol.

Those who support Canada's participation in the Madrid Protocol often cite the fact that Canada, as a relatively small market, can utilize the protocol to bring further attention to its growing reputation as an important contributor to the world's economy. Also, that the harmonization of Canadian and US trademark law, facilitated by accession, may be advantageous considering that the United States is Canada's primary trading partner. By contrast, those who oppose the protocol wish to ensure that its adoption does not lead to a dilution of standards for the domestic regime. Moreover, opponents argue that, owing to the relatively small number of Canadian corporations (multinationals with large trademark portfolios) which would stand to benefit from accession, the protocol will potentially serve to benefit only a few at the expense of many.

As of June 2007 CIPO remains committed to continuing its dialogue with the public on how best to modify Canada's trademark regime to adhere to the Madrid Protocol. CIPO has stated that the impetus for Canada to join the Madrid Protocol is to augment its competitiveness in the domestic and global marketplaces. Only time will tell if and how this adherence will come to fruition.

Alexander Monic and Gordon Zimmerman, Borden Ladner Gervais LLP, Toronto

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