IP Legislation Update
The Canadian government recently tabled a number of treaties involving intellectual property in the House of Commons and reintroduced Bill C-56, Combating Counterfeit Products Act. These two legislative initiatives are briefly outlined below.
Tabling of Five International Treaties
On January 27, 2014, the Parliamentary Secretary to the Minister of Foreign Affairs tabled the following five treaties related to intellectual property in the House of Commons:
- Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol): The Madrid Protocol provides for a centralized trademark filing system. It allows trademark owners to register a trademark in multiple countries through a single international application. A trademark owner can file an application in its "office of origin"—which for persons who are Canadian nationals, are domiciled in Canada, or have a real and effective industrial or commercial establishment in Canada is the Canadian Trade-marks Office—and include a list of additional Madrid Protocol signatories where the trademark owner wishes to register, eliminating the need to file individual applications in each country. (Most industrialized countries have already ratified the Madrid Protocol.)
- Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (Hague Agreement): The Hague Agreement creates a system like the Madrid Protocol, but for the registration of industrial designs. It allows an industrial design owner to use a single international application to register an industrial design in multiple countries.
- Singapore Treaty on the Law of Trademarks (Singapore Treaty): The Singapore Treaty harmonizes and simplifies the procedure for registering trademarks. It also expands the definition of trademark to include non-traditional trademarks such as tastes, colours, sounds, textures, and three-dimensional shapes. Bill C-8, discussed below, includes some of the legislative amendments required to implement the Singapore Treaty.
- Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement): The Nice Agreement creates a standardized and comprehensive international classification system for use in trademark applications and registrations, and includes over 11,000 individual goods and services classes. The goal of the Nice Agreement is to simplify filing in multiple jurisdictions by providing standardized descriptions across Nice Agreement signatories, and to aid in the trademark search process. Classification is already required in many national trademark regimes outside of Canada, so adherence to the Nice Agreement will bring Canada’s requirements in line with international practice.
- Patent Law Treaty (PLT): The PLT harmonizes and streamlines the formal procedures for applying for and obtaining a patent. It would affect Canadian Patent Office practices and legislative provisions related to procedural matters such as form templates, filing electronically, relief in respect of time limits and obtaining a filing date.
The tabling of these five treaties is only the first step toward Canada becoming bound by them. The Canadian government’s Policy on Tabling Treaties in Parliament sets out a waiting period of at least 21 days whereby Members of Parliament may debate the treaties and present and vote on motions related to the treaties. After the end of the waiting period on March 4, 2014, the Canadian government may introduce the necessary treaty-implementing legislation in Parliament.
The implementing legislation for these five treaties will likely require extensive amendments to legislation such as the Patent Act, Trade-marks Act, Industrial Design Act and their respective regulations. However, the implementation of these treaties will harmonize Canada’s trademark, patent and industrial design legislation with other signatories and its major trade partners.
Bill C-8 - Combating Counterfeit Products Act
On October 28, 2013, the Canadian government reintroduced Bill C-56, a bill from the previous parliamentary session, as Bill C-8, Combating Counterfeit Products Act (Bill). The Bill makes numerous amendments to both the Copyright Act and the Trade-marks Act. It has two main objectives: (i) preventing the importation of counterfeit products into Canada to protect public safety and health; and (ii) streamlining the trademark application process and allowing the registration of non-traditional trademarks.A more detailed overview of the Bill can be found in Torys’ March 6, 2013 Intellectual Property Bulletin. The Bill is currently awaiting third reading after minor amendments recommended in a report by the Standing Committee on Industry, Science and Technology were accepted by the House of Commons on January 31, 2014.
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* Assistance from Sam Golder, Articling Student.
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