The Canadian Intellectual Property Office (CIPO) recently launched a new consultation on possible Canadian accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the Madrid Protocol) and the Singapore Treaty on the Law of Trademarks (the Singapore Treaty).
This is not the first time CIPO has looked at the issue of Canada acceding to the Madrid Protocol. Five years ago a similar consultation took place. In response to a request for input, CIPO received feedback from the Intellectual Property Institute of Canada and from the International Trademark Association, though no further action was taken by CIPO at that time.
According to CIPO’s backgrounder to the current consultation, the intervening five years have seen important trading partners such as the United States join both the Madrid Protocol and the Singapore Treaty. As a result, according to CIPO, Canada is increasingly seen as isolated in its trademark laws and practices.
As many readers will be aware, the Madrid Protocol permits an applicant from a member country to file an application in its home country to register a trademark and to simultaneously file an international trademark application, under which the applicant designates other member countries in which the Applicant wishes to protect its mark. Registrability of marks covered by Madrid Protocol applications is still subject to the national laws of each member country that an international application is filed in.
The Singapore Treaty amends and expands on the Trademark Law Treaty of 1994 and aims to simplify and standardize many formalities and procedures relating to the administration of trademarks. It also covers new forms of marks, such as holograms, sound marks and smell marks. As with the Madrid Protocol, the Singapore Treaty does not affect substantive national trademark laws, such as the grounds on which applications for registration may be refused.
CIPO’s backgrounder seems to be slanted towards approval of both the Madrid Protocol and the Singapore Treaty, on the basis that they are necessary to align Canada’s trademark laws and procedures with “modern business practices”. Whether the benefits of these two treaties would outweigh the potential negative consequences and whether such benefits would accrue more to foreign applicants than to Canadian trademark owners, remains to be seen. While there are notable exceptions, Canadian brand owners tend not to file internationally as much as those from many other developed countries, such as the U.S. and the EU, and depending on various factors, the potential cost savings of filing under the Madrid Protocol generally arise only if an international application designates more than three member countries at the same time.
CIPO has asked for comments on its consultation to be submitted by March 15, 2010.