On January 27, 2014 the Minister of Foreign Affairs tabled five
intellectual property treaties in the Canadian House of Commons.
The Government will now observe a twenty-one day sitting period,
expiring March 4, 2014, when Members of Parliament may debate
aspects of the treaties and vote on related motions. These treaties
Protocol Relating to the Madrid Agreement
Concerning the International Registration of Marks("Madrid Protocol"), which provides for
a centralized trade mark filing system, allowing trade mark owners
to obtain registered rights in multiple jurisdictions by filing a
single "home" application identifying additional Madrid
countries where trade mark registration is sought. An international
application is filed with an "office of origin." The
Canadian Trade-marks Office is the office of origin for persons who
are Canadian nationals, are domiciled in Canada, or have a real and
effective industrial or commercial establishment in Canada.
Singapore Treaty on the Law of
Treaty"), which is intended to simplify and harmonize
trade mark filing procedures and other formalities, while also
recognizing "non-traditional" trade marks. Many of the
changes encompassed in the Singapore Treaty are included in the
recently proposed changes to the Trade-marks Act through
the Combatting Counterfeit Products Act.
Nice Agreement Concerning the International
Classification of Goods and Services for the Purposes of the
Registration of Marks("Nice
Agreement") which standardizes descriptions of wares
and services to simplify filing in various national trade mark
offices. The Agreement defines 45 general classes of goods and
services. Canadian trade mark law presently requires that goods and
services be defined with specificity in "ordinary commercial
terms", but a single application may contain goods and/or
services in multiple classes. The Wares and Services
Manual sets out approved descriptions of goods and services to
assist applicants in drafting their applications.
Geneva Act of the Hague Agreement Concerning the
International Registration of Industrial Designs("Geneva Act"), which allows an
applicant to obtain protection for industrial designs in multiple
contracting party states by means of an international application
similar to the Patent Cooperation Treaty, or PCT. Any person who is
a national of a contracting party, is domiciled in a contracting
party, or has a "real and effective industrial or commercial
establishment" in the territory of a contract party is
entitled to file an international application.
Patent Law Treaty, is intended to
harmonize and streamline formal procedures, although it does not
limit a contracting state from regulating substantive law relating
to patents. It may be possible to implement the treaty without
significantly amending Canada's existing patent legislation, as
Canada's patent statute does not contradict the requirements of
the PLT. Ratification and implementation will impact Patent Office
practices such as obtaining a filing date, filing electronically,
form templates, and relief in respect of time limits.
If passed, these treaties may streamline procedures for
Canadians to obtain international registrations for their patents,
trade marks, and industrial designs. These regimes will also
simplify access to Canada for foreign entities. The Madrid
Protocol, Singapore Treaty and Nice Agreement each affect
procedures for trade mark applications and registrations in
Treaty implementation will require amendments to the Patent
Act, Industrial Design Act and Trade-marks
Act, and their corresponding Regulations.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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