By Sanjukta Tole of the MARQUES International Trade Mark Law & Practice Team

Following the formal passage of amendments to the Canadian Trademarks Act and the Trademark Regulations into law in 2014 and December 2018 respectively, Canada submitted the necessary documents with WIPO to accede to the Nice Agreement, Madrid Protocol and the Singapore Treaty on 18 March 2019. These amendments, along with significant changes to Canada’s domestic trademark laws, will come into effect on 17 June 2019.

Among the welcome statutory amendments for MARQUES members, including its Canadian contingent, will be the long-awaited adoption of Nice Classes by the Canadian Trademarks Office (Canadian TMO) for both domestic and international applications. It remains to be seen whether the strict rules governing the description of goods and services implemented by the Canadian TMO will be relaxed, particularly in the case of international applications.

Canada, the world’s 10^th largest economy, is the last of the G8 countries to adopt the Madrid Protocol, which permits the protection of a trade mark using a single application across up to 120 countries. Together with the adoption of the Singapore Treaty, this change will provide a wider range of trade mark rights, including the recognition of non-traditional trade marks, and greater efficiencies in trade mark registration process. It has also resulted in a commitment from the Canadian TMO to enhance its offering of electronic services and communications. 

The MARQUES International Trade Mark Law and Practice Team is certainly looking forward to the implementation of the Madrid Protocol in Canada as it will permit brand owners outside Canada to leverage the international harmonised trade mark laws and practices of the Madrid Protocol within Canada, and the Team will be able to represent the interests and concerns of Canadian brand owners before WIPO. The Team is available as a resource to MARQUES’ Canadian members and can help in navigating the nuances of the Madrid Protocol and other WIPO treaties.

The adoption of the Madrid Protocol will broaden the scope of trade mark protection in Canada in a cost-effective manner. It is a change that the Team and the members of MARQUES at large will embrace.  

Sanjukta Tole is a partner of Marks & Clerk (Canada) and a member of the MARQUES International Trade Mark Law and Practice Team