Government signifies intention to join Madrid Protocol

Canada

The Year of the Horse promises galloping changes to the trademarks landscape in Canada. On January 27 2014 the Canadian government tabled three cornerstone treaties set to transform the protection of trademarks in Canada, as below:

The tabling of the treaties launches a 21-day waiting period, following which the government is expected to table amendments to the Trademarks Act to implement the treaties. Once the amendments have been adopted, the government will then seek approval from the governor-in-council to express consent to be bound by the treaties. While there is no timeline as yet from the government, it is anticipated that the latter will move expeditiously to implement the treaties.

It has long been speculated that Canada would join the Madrid Protocol as part of its recent Comprehensive Economic and Trade Agreement (CETA) with the European Union. As recently as June 2013, the government indicated its intention to undertake consultations in relation to the Madrid Protocol (see "IP Regime in Canada"). However, the timing of the government’s action took many in the profession by surprise.

The fundamental question now is with respect to the implementation of the Madrid Protocol. Given recent and significant amendments to the Trademarks Act under Bill C-8, an Act to Combat Counterfeiting Products, Canada may well refrain from sweeping changes to accommodate the Madrid Protocol. However, a study of the Legal and Technical Implications of Canadian Adherence to the Madrid Protocol published by the Canadian Intellectual Property Office in January 2012 flags some of the key issues that the government will have to address, such as changes to the current Canadian use requirements, and suggests that change is on the horizon.

Bill C-8, which was introduced for a third reading in the House of Commons on January 31 2014, heralds significant changes to the Canadian trademarks regime once it is passed into law. In particular, it will:

  • set up a number of criminal offences in relation to the sale of counterfeit goods;
  • put in place a new regime for border enforcement in relation to counterfeit goods; and
  • change to the definition of 'trademarks' to include figurative elements, personal names, three-dimensional shapes, holograms, moving images, sounds, scents, tastes, textures and the positioning of a sign.

No matter which way Canada approaches these cornerstone treaties, the year ahead promises to be an interesting one for Canadian trademark owners and practitioners alike as they adapt to the Act to Combat Counterfeiting Products, as well as to the amendments needed in order to implement the Madrid Protocol.

Robert A MacDonald and Monique M Couture, Gowling Lafleur Henderson LLP, Ottawa

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