How the Madrid Protocol, Singapore Treaty and Nice Agreement Will Affect Trademark Owners

by Bennett Jones LLP

On January 27, 2014, a number of international intellectual property related treaties were tabled by the Canadian government. This is the first procedural step towards ratification and implementation. Once implemented, these treaties will have a significant impact on trademark owners and how their rights are obtained internationally.

The tabled treaties of greatest importance to trademark owners are the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol), the Singapore Treaty on the Law of Trademarks (Singapore Treaty) and the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement). The following is a brief summary of the provisions of these treaties.

Madrid Protocol

The Madrid Protocol provides for a centralized filing system, permitting trademark owners in member countries to register their rights in multiple jurisdictions by filing a single application with its national trademark office, for a single fee and in a single language, in English, French or Spanish. Examinations and oppositions will be conducted on a national level to further define the scope of rights in each country.

The immediate benefit to trademark owners appears to be cost, as an international application may be more cost effective than filing separately in numerous jurisdictions. Another advantage is an international application may be more time efficient to prosecute than separate national applications, which may require administrative steps such as legalizations and translations. Management of a trademark portfolio may also be simplified, as documents regarding the international application and ensuing registration can be recorded with the originating trademark office, rather than having to be recorded with individual trademark offices in various jurisdictions.

The process involves filing a single application in the applicant’s home country and designating the foreign member countries in which registration is also sought. The applicant’s home country application is prosecuted in the same manner as a regular national application for that country. For the designated foreign member countries, the respective national trademark offices have a prescribed period of time within which to raise any objections. If no objections arise within this time period, the trademark will register in each of the designated foreign designations.

One apparent downside of an international application is, since the resulting registration is based on the home country application, registration covers the wares and services accepted in the home country application. Given that in some countries, such as Canada and the United States, a more specific description of goods and services is required than in other countries, it may be beneficial to file directly in other countries where a broader description of goods and services is permitted.

Trademark owners should also be aware that there is the potential for a loss of rights if the home country application does not mature to registration, or if registration issues in the home country but is cancelled within five years of the registration date. A loss of rights may be avoided by converting the foreign country designations into separate applications. However, this would negate the cost and time savings achieved by filing an international application under the Madrid Protocol.

Singapore Treaty

The primary purpose of the Singapore Treaty is to simplify and standardize many formalities and procedures relating to the administration of trademarks.

The Singapore Treaty makes procedures more user-friendly, more consistent internationally and less time-consuming for applicants. It regulates the maximum number of requests by an office and has common rules for recording, amending and cancelling trademark licences. The Singapore Treaty also introduces mandatory relief measures in order to alleviate procedural errors made by applicants, including missed deadlines. Finally, it requires trademark offices accept applications for non-traditional marks, such as three-dimensional marks, holograms, colour, sound, taste and feel marks. The Canadian government has already incorporated some of these administrative changes in Bill C-8, the Combating Counterfeit Products Act, which is currently in its final stages in Parliament.

The provisions of this treaty include the use of an international classification system for goods and services, the Nice Classification, which will be discussed further below.

Amending Canada’s Trade-Marks Act to align with the standards of the Singapore Treaty would harmonize our administrative procedures for registering trademarks with those of our trading partners. This would likely result in administrative savings and reduced compliance costs for both Canadian and foreign applicants.

Nice Agreement

The Nice Agreement establishes a classification of goods and services for the purpose of registering trademarks. The classification consists of a list of classes, 34 for goods, and 11 for services, as well as an alphabetical list of the goods and services that fall under these respective classes.

If the Nice Agreement is adopted, the Canadian Intellectual Property Office has indicated that Canada’s legislative requirement that goods and services be specified in “ordinary commercial terms” would still be required. In this regard, adopting a classification requirement appears to unnecessarily complicate the trademark application process.

In a predominant number of countries, government fees are applied to each class of goods and services applied for in an application. Presently, the Canadian Intellectual Property Office has not indicated that it is presently considering a change from its system of charging one government filing fee to applicants, despite the number of classes of goods and services designated in the application.


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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