Canada has been somewhat of a laggard when it comes to the
accession and implementation of international trade-mark treaties,
but this is changing. While discussion has carried on for years, a
serious push began in 2014 to implement three key trade-mark
The Nice Agreement concerning the International Classification
of Goods and Services for the Purposes of the Registration of Marks
(i.e. the Nice Classification, discussed below and the focus of
The Singapore Treaty on the Law of Trademarks (a treaty that
helps to set certain common procedures for trade-mark registration
and licensing, so as to harmonize these between jurisdictions),
The Protocol relating to the Madrid Agreement concerning the
International Registration of Marks (an agreement and protocol for
an international system to facilitate registration in multiple
jurisdictions. This does not create an 'international'
trade-mark, but rather a system to deal with national rights more
centrally, so as to ease the administrative burden in seeking
trade-mark registrations in multiple jurisdictions).
While legislative changes to Canada's Trade-marks
Act, R.S.C. 1985, c. T-13 have been made to implement the
above treaties, the changes are pending the drafting of detailed
regulations that would govern how day-to-day practice would operate
and, as a result, have not come into force. Concurrently, the
Canadian Intellectual Property Office (CIPO) has been working to
update infrastructure/information technology systems to support the
many day-to-day practice changes these treaties will bring. While
no fixed date for full implementation has been set, it is currently
expected that it will be late 2016 or early 2017 at the
In the interim, CIPO has recently announced that, starting this
fall, it will begin to accept Canadian trade-mark applications that
use the Nice Classification system. The Nice Classification is an
international classification (used by many other intellectual
property offices around the world) of goods and services that is
administered/updated by the World Intellectual Property
Organization (WIPO) and that was established by the Nice Agreement.
The current version of the Nice Classification is the 2015 version
of the tenth edition, which came into force on January 1, 2015 (for
more details, please visit WIPO's Nice
This change will allow Canadian trade-mark applicants to use and
become familiar with the Nice Classification system and will assist
in future registration/renewals once the international trade-mark
treaties are fully implemented and using the Nice Classification
regime will become mandatory in Canada. In addition, by learning to
use the classification system, it will provide Canadian applicants
the necessary knowledge to more easily use Nice Classification in
other jurisdictions that require the use of this system. As the
classification system groups goods/services, it will allow for
easier searching (for registration, or policing purposes) for other
marks (including potentially confusing ones) based on these
This is but one of many steps leading to full implementation by
Canada of the Nice Agreement, the Singapore Treaty, and the Madrid
Agreement and Protocol.
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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