Canada: The Chances Of Canada Finally Joining The Madrid System – Is It Going To Happen Soon? What Needs To Be Done Before It Can?

Last Updated: November 4 2014
Article by Ashley Dumouchel

Canada recently took a significant step towards implementation of the Madrid Protocol when Bill C-31, the Economic Action Plan 2014, No. 1, received Royal Assent in June 2014. After having tabled five intellectual property (IP) treaties in January 2014, the Government of Canada moved swiftly with the introduction of implementing legislation in Parliament in March.

The ratification and implementation of the Madrid Protocol and other IP treaties will bring Canada into line with the rest of the developed world. For years, Canada has been the only developed country not party to the Madrid System, and its IP system has been criticized as being archaic and stifling economic growth.

The Madrid Protocol allows trademark owners to register their marks in one or more of the Protocol's more than 90 contracting parties by filing a single international application. With the implementation of the Protocol in Canada, Canadian applicants will be given the right to file an international application using the Canadian Trademarks Office as the Office of Origin, and foreign brand-owners will be given the opportunity to choose Canada as a Designated Contracting Party.

Despite the call for reform by trademarks professionals, Bill C-31 was tabled without much notice to or consultation with the profession. The legislative amendments have been widely criticized as being overly broad and unnecessary to bring Canada into line with its international obligations. Among other changes, the Canadian Trademarks Act will be amended to remove all use requirements at the time of registration. When combined with the expected increase in trademark filings from the international system, the lack of requirement to use a trademark prior to registration is expected to lead to a considerable increase in contentious proceedings among brand-owners. While such legislative changes were touted as being part and parcel with Canada's international obligations and aligning its trademark regime with international best practices, it is to be noted that none of the ratified treaties require such drastic changes be made to local law.

Despite criticism, the Bill received Royal Assent, and is expected to be proclaimed into force by mid-2015. The Canadian Intellectual Property Office (CIPO) has advised that the coming-into-force date of the amended legislation will only be determined once the Trademark Regulations have been revised, and relevant IT systems have been updated.

It is suggested, however, that changes to the Canadian trademark system that go beyond mere 'technical' requirements are required prior to implementation. Of course, the Regulations accompanying the amended legislationwill significantly impact the effect of the Bill. The role of CIPO as an Office of Origin and as an Office of a Designated Contracting Party must be clarified, and provisions relating to the payment of fees, deadlines and other practical matters must be set. The successful implementation of the Madrid Protocol, however, will likely need to involve the opening of pocket books on the part of government bodies as well as brand-owners.

At CIPO, a significant sum will need to be spent on staffing and training to ensure not only that the Office is able to comply with the tight timelines mandated by the Protocol, but also that domestic and international applicants are treated fairly. As an example, the time limit under the Protocol for a designated contracting party to refuse registration may be up to 18 months. On the other hand, the Office is currently taking 8-10 months to examine applications. When the burden of international applications is added to an already overloaded system, there is concern that the prosecution timeline for domestic applications will be significantly increased in order to meet the strict time limits set by the Protocol.

The Courts also need to prepare for an onslaught of complex new litigation. Canada's legal system has traditionally been 'underdeveloped' due to the relatively small volume of litigation and corresponding lack of jurisprudence on many topics. The implementation of the Protocol and other IP treaties could give Canadian litigants and the Courts the opportunity to look to other jurisdictions for legal guidance. However, the path that the government has chosen regarding use requirements will mean that the existing jurisprudential system, which is built on use-based rights, will now have decreased precedential value. This, combined with the expected increase in contentious proceedings due to trademark 'squatting', may critically burden the Court system if additional funding is not provided.

Finally, successful implementation of the Madrid Protocol from a brand-owner's point of view will be dependent on their ability to continue to successfully protect their brands in Canada. The changes will bring both opportunity and risk to businesses. In tough economic times, IP protection and enforcement is often the first item on the budgetary chopping block, but it is suggested that in order to maintain a competitive edge, Canadian businesses and foreign investors in Canada must fully consider the implications of the new legislation for their brands and act quickly to register key trademarks.

On the whole, the Government of Canada is moving towards a modern trademarks regime. It remains to be seen, however, what the practical effects of such modernization will have on brand protection.

Originally published in IPPro The Internet.

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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