Consultation on modernization of Trademarks Act launched

The Canadian Intellectual Property Office (CIPO) has launched a consultation focused on the modernization of the Trademarks Act and the harmonization of the Canadian trademark system with that used in many other countries. The full text of the consultation can be viewed on CIPO's website. The consultation is open for comments until March 15 2010.
The consultation is broken down into three areas.

The first portion of the consultation concerns the general modernization of the Trademarks Act. It allows users to address a wide range of issues, including:
  • timing and content of trademark examination;
  • allowance of non-traditional trademarks (ie, sound, colour and motion);
  • life of a registration;
  • cancellation proceedings on the grounds of non-use; and
  • the special protection now found in Section 9 of the act for universities and public authorities.
The second part of the consultation deals with Canada's adherence to the Singapore Treaty on the Law of Trademarks. The Singapore Treaty was adopted in 2006 and expands on the Trademark Law Treaty of 1994. The Singapore Treaty is intended to simplify and standardize administrative procedures relating to trademarks, but the issue that would likely have the most impact in Canada is the classification of goods and services. Canada is one of the only countries that does not formally use the Nice Classification system for its trademark application process. Concerns for users of the Canadian trademark system include:
  • what role owners of existing registrations and applications will have in determining classification; and
  • how classification will affect searches, examinations, oppositions and infringement.
Another potential concern is costs. Traditionally, classification brings fees on a per class basis. Currently, all trademark applicants pay C$250 (for electronically filed application), regardless of the list of goods and services in the application. Another consideration is whether classification would alter the current requirement to provide details of goods and services in ordinary commercial terms, and the details required for those terms.
The last part of the consultation concerns the adherence to the Madrid Agreement Concerning the International Registration of Trademarks. Canada is one of the only developed countries that is not a member, and government officials suggest that Canada is losing the chance to participate in international negotiations by this absence. Canadians have not traditionally filed internationally as much as brand owners in many other countries, and it remains to be seen whether Canadian brand owners would benefit from this system. In addition, while the Madrid Agreement can provide lower costs to some users, a key issue for users of the Canadian system is the overall impact on costs, selection of marks, timing and ease of registration. Canadian practitioners have already raised concerns that adhering to the Madrid Agreement should not compromise the ease of access for Canadian users.
Cynthia Rowden and Terry Edwards, Bereskin & Parr LLP, Toronto

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