A table-full of treaties: Canadian parliament tables five IP-related treaties

On January 27, 2014, the Parliament of Canada "laid upon the Table" copies of five international treaties related to intellectual property. The treaties are:

• Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks ("Madrid Protocol");
• Singapore Treaty on the Law of Trademarks ("Singapore Treaty");
• Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks ("Nice Agreement");
• Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs ("Geneva Act"); and
• Patent Law Treaty.

These treaties are international agreements that can be entered into by Canada and would be governed by international law. Each aims to harmonize filing and registration procedures across multiple jurisdictions. Notably, the United States recently revised its rules of practice pursuant to the Patent Law Treaties Implementation Act, which amends U.S. patent law to implement the provisions of the Patent Law Treaty. In general, the Madrid Protocol and the Geneva Act create an international registration system for trade-marks and industrial designs, respectively. The Singapore Treaty and Patent Law Treaty aim to make national trade-mark and patent registration systems, respectively, more user-friendly to reduce business compliance costs for mark and patent owners. The Nice Agreement relates to a system used to categorize goods and services for the purposes of the registration of trade-marks. Each of the five treaties is administered by the World Intellectual Property Organization (WIPO) based in Geneva, Switzerland.

In Canada, the "tabling" of a treaty in Parliament by the Minister of Foreign Affairs is the first procedural step after the signing or adoption of an international treaty towards its ratification and subsequent implementation. Since the above treaties have now been tabled in Parliament, we can expect the government to observe a waiting period of at least twenty-one sitting days during which Members of Parliament can debate aspects of any of the treaties and/or present and vote on motions regarding any of the treaties. Ratification and implementation aspects of the parliamentary process can be guided by the content of the "Explanatory Memorandum" that accompanied the tabling of each treaty. Each Explanatory Memorandum[1] summarizes the subject matter of the treaty, ways that the treaty may further Canada's interests, and policy, financial and other considerations for implementing the treaty.

The twenty-one sitting day period will expire on March 4, 2014, at which time the government may take further steps to bring the treaties into force. In some cases, adherence to treaty obligations may be possible without introducing new legislation. In other cases, changes to legislation may be required to comply with the treaty obligations.

Madrid Protocol

The Madrid Protocol provides for a centralized trade-mark filing system, which allows for trade-mark owners to obtain registered rights in multiple jurisdictions through the filing of a single application. Under the Madrid Protocol, the filing of a "home" application in the trade-marks office of the trade-mark owner allows for registered rights to be obtained in other contracting countries which have been designated in the initial, "home" application.

The Madrid Protocol offers potential cost and time savings for Canadian trade-mark owners who wish to obtain registered trade-mark rights in multiple jurisdictions worldwide, compared to individually filed applications in each of those countries. For instance, filing through the Madrid Protocol would eliminate the need to retain local trade-mark agents in each jurisdiction where registration is sought. Another advantage would be the ability to attend to administrative matters in the maintenance of a trade-mark portfolio in multiple jurisdictions (such as changes to the ownership of a registration) in a single step.

One potential disadvantage of proceeding with an application under the Madrid Protocol is the vulnerability of international registrations to a so-called "central attack". If the "home" application does not mature to registration or it matures to application but is cancelled or invalidated within the first five years of registration, there can be a loss of rights with respect to international applications and registrations. Such situations are relatively rare, and can be mitigated by the conversion of international applications into regular, national trade-mark applications in individual countries.

Importantly, the scope of wares or services for which registration may be obtained in other contracting countries cannot extend beyond those set out in the applicant's home application or registration.

For a complete listing and discussion of expected changes to Canadian law and practice due to implementation of the Madrid Protocol, please see the CIPO website.

Singapore Treaty

Originally agreed to in 1994, and later amended and expanded in 2006, the Singapore Treaty is intended to simplify and harmonize trade-mark filing procedures and other formalities. For example, the Singapore Treaty provides for the division of applications. In cases where a trade-mark application encounters difficulty during examination with respect to only certain wares or services, filing a divisional application will allow the application to proceed with non-contentious wares or services while the trade-marks office's objections are attended to. The Singapore Treaty also provides for the recognition for so-called "non-traditional" trade-marks such as holograms, sound marks, and olfactory marks.

Of note, the government has recently proposed changes to the Trade-marks Act through the Combating Counterfeit Products Act which would similarly provide for specific application procedures for non-traditional marks such as three-dimensional shapes, holograms, moving images, scent, taste and texture, as well as the possibility of filing divisional trade-mark applications.

In addition, the Singapore Treaty includes mandatory relief measures to alleviate procedural errors made by applicants, such as missed deadlines. Contracting parties are required to make available at least one of three relief measures: extensions of time, continued processing, or reinstatement of rights in circumstances such as an unintentional failure to meet a deadline.

Finally, the Singapore Treaty also provides for the adoption of the Nice classification system, discussed below.

Nice Agreement

The Nice Agreement provides an authoritative classification of 45 general classes of goods and services for use in registering trade-marks. Within these general classes are many specific sub-classes and a list of over 11,000 individual goods and services, which are from time to time amended by a committee made up of members of contracting states. Through this classification system, the Nice Agreement aims to standardize descriptions of wares and services to simplify filing in the national trade-mark offices of parties to the agreement and to streamline the trade-mark search process.

Presently, the Canadian Trade-marks Act only requires that goods and services be defined with "specificity" and in "ordinary commercial terms". The Canadian trade-marks office also publishes a Wares and Services Manual to assist trade-mark applicants in describing their wares and services. No specific requirement exists under the Trade-marks Act for the grouping or classification of goods or services. The Canadian Intellectual Property Office (CIPO), for its own internal search purposes, uses a software system which classifies goods and services in trade-mark applications in a manner which is similar, but not identical, to the Nice classification system.

The only specific obligation imposed by the Nice Agreement is for contracting states to include the numbers of the Nice classes of goods and services in official documents and publications related to trade-mark registrations.

It remains to be seen, however, how the Nice classification system will be reconciled with Canada's longstanding regime related to classification.

Geneva Act

In general terms, the Geneva Act offers the opportunity to obtain protection for industrial designs in multiple Contracting Parties by means of a single international application. In this sense the Hague System for industrial designs is the "sister act" to the PCT system for utility patents. Any person that is a national of a Contracting Party or that has a domicile, a habitual residence or a "real and effective industrial or commercial establishment" in the territory of a Contracting Party is entitled to file an international application (Article 3 of the Geneva Act).

Various benefits are associated with filing an international application: there is no need to file documentation in various languages, to keep a watch on the deadlines for renewal of different national registrations, or to pay fees in various currencies. Further, Article 5(4) of the Geneva Act sets out that an international application may comprise several different designs (up to a maximum of 100 under Rule 7(3)), which is not currently possible in Canada. Once an application is filed, where a designated national Office does not communicate a refusal within the prescribed time period (currently six months), the international registration produces the same effect as a grant of protection for an industrial design under the law of the Contracting Party (Article 14). Currently, international registrations are valid for an initial term of five years, and can be renewed for additional periods of five terms, up to the expiry of the total term of protection permitted by the law of the Contracting Party, which in Canada is currently ten years.

Ratification of the Geneva Act by the Canadian government would likely necessitate various changes to Canada's practice and Industrial Design Act and Regulations to accommodate the Hague system. These changes may include constructing a procedure by which an applicant can file an international application through the CIPO, legislative amendments to provide for protection to international registrations in Canada, and changes to Office practice to accommodate applications comprising multiple designs. A comprehensive discussion of the legal and technical implications of Canadian adherence to the Geneva Act of the Hague Agreement can be found on the CIPO website.

Patent Law Treaty

According to WIPO, the aim of the PLT is to harmonize and streamline formal procedures in respect of national and regional patent applications and patents, and thus to make these procedures more user-friendly. Importantly, the PLT sets out in Article 2 that no provision is to be construed as prescribing anything that would limit the freedom of contracting states to regulate substantive law relating to patents.

Where Canadian legislation does not contradict the requirements of the PLT, it may be possible to implement the treaty without amending legislation. For example, Article 5(3) of the PLT requires that a Patent Office of a Contracting State notify any applicant whose application does not comply with the minimum filing date requirements and to provide the applicant at least two months (set under Rule 2(1) of the Regulations under the Patent Law Treaty) to comply. Although Canadian patent legislation does not currently require the Patent Office to notify applicants of missing parts to applications, courtesy letters are provided as a matter of practice, and thus laws would not necessarily need to be changed.

Ratification of the PLT by Canada may impact various Patent Office practices and/or legislative provisions related to procedural matters such as obtaining a filing date, filing electronically, form templates, and relief in respect of time limits. For a complete listing and discussion of expected changes to Canadian law and practice due to implementation of the PLT, please see the CIPO website.