Canada to implement the #Madrid Protocol, Nice Agreement and Singapore Treaty

Canada's legislation implementing the Madrid Protocol, the Nice Agreement and the Singapore Treaty takes effect on June 17, 2019.

While Canada will begin using the Nice classification, it will maintain the requirement to specify goods and services rather than describing them by categories. For example, "clothing" would be objected to while "pants", "shirts", and "gloves" would be considered sufficiently specific.

Canada is also eliminating the requirement to declare whether and when the trademark was used in Canada, which will be welcome news to many  foreign applicants.  It may also be welcome news to trademark squatters such as Michael Gleissner.  In further planned changes but which have not yet been passed into law, applications will be opposable on the basis that the application was filed in "bad faith" but it is not yet known what will constitute “bad faith” and whether such a ground will be effective against trademark squatters.

If your clients designate Canada in a Madrid Protocol application, SMITHS IP will be happy to assist you in responding to any Canadian Intellectual Property Office objections.

If you have any questions, feel free to contact us.