As a result of the government of Canada tabling five treaties on
intellectual property law in the House of Commons on January 27,
2014, the government has initiated the process to make the
provisions of these treaties part of Canadian law. Legislation to
implement the necessary changes to the Trade-marks Act,
Industrial Design Act and Patent Act can be
expected as early as March.
While Canada's intellectual property laws have undergone
significant change in the last several years, implementation of
these five treaties will likely have a greater impact than the
changes that have taken place since 2000. As Winston Churchill
observed: The pessimist sees difficulty in every opportunity. The
optimist sees opportunity in every difficulty." While the
transition will not be without difficulty, it presents a
significant opportunity for Canadian business.
Three of the treaties deal with trade-marks: namely the Madrid
Protocol, the Singapore Treaty, and the Nice Agreement. The Madrid
Protocol establishes an international system for filing trade-mark
applications in several jurisdictions at once. Once the mark is
registered, changes, such as changes in ownership, can also be
addressed in a single filing. At present Canadian businesses must
file separately in each jurisdiction in which it seeks protection.
The Singapore Treaty seeks to bring the practice and procedure of
the trade-marks offices in each country that joins in line with a
common standard. While in the short term this will mean learning a
new system, in the long run it will mean less time and effort spent
dealing with differences among relevant offices. The Nice Agreement
is a standardized system for classifying wares and services that
should simplify searching for relevant trade-marks and preparation
of applications. Adoption of the Nice Agreement for classification
is a prerequisite for participation in the Madrid Protocol and the
The fourth treaty, the Geneva Act of the Hague Agreement
establishes a system for the international registration of
industrial designs (which corresponds to a design patent in the
United States). In this it is similar to the Madrid Protocol for
trade-marks and the Patent Cooperation Treaty system presently in
force in Canada for patents.
The fifth treaty, the Patent Law Treaty, corresponds in its
intent to the Singapore Treaty for trade-marks, and aims to bring
patent law practice of member states in line with a common
standard. Again, while in the short term it will mean learning a
new system to prosecute Canadian patent applications, it will also
mean that the differences between patent offices should diminish
The greater uniformity of international intellectual property
laws and registry systems should reduce the logistical challenges
and cost of maintaining an international intellectual property
portfolio. This is the opportunity. Once Canada implements these
treaties, it will of course remove a barrier to foreign businesses
protecting their intellectual property in Canada. This is the
difficulty. Both the opportunity and the difficulty will need to be
addressed by fresh thinking, and long-standing business processes
will have to change. Planning for these changes will position a
business to compete effectively. Regardless, change is coming, and
businesses will fall into one of two categories: those that manage
the change, and those that have it thrust upon them.
The foregoing provides only an overview. Readers are
cautioned against making any decisions based on this material
alone. Rather, a qualified lawyer should be consulted.
The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
Last year we saw the Canadian Courts release trademark decisions that granted a rare interlocutory injunction, issued jailed sentences for failure to comply with injunctive relief, grappled with trademark and internet issues...
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