Canada becomes the 104th member state of Madrid
On March 17, 2019, Canada officially submitted its instrument of accession to WIPO (World Intellectual Property Organization), applying to join the three major trademark treaties administered by WIPO: the Madrid Protocol, the Singapore Treaty, and the Nice Agreement. This marks the formal establishment of Canada's modernized trademark system.
By joining the Madrid Protocol, Canada became the 104th member of the Madrid System. Canadian trademark owners can now designate up to 103 member countries within the system, covering up to 119 countries, while trademark owners from other Madrid members can also extend protection to Canada through the Madrid route. This will greatly facilitate Canadian companies' overseas branding and the registration and protection of other countries' brands in Canada. Simultaneously, to adapt to major changes in trademark law, the Canadian Trademark Regulations and Examination Guidelines have been revised and finalized.
The modernization of Canada's trademark system has brought numerous significant benefits to trademark applicants, including a multi-dimensional reduction in application costs for businesses, streamlined administrative approval procedures, and enhanced online electronic service systems.
(1) Changes in Classification and Validity Period
Previously, trademark applications in Canada were not filed according to the Nice Classification but rather without classification; the term of trademark protection was 15 years. Joining the Singapore Treaty has changed Canada's previous non-classification-based fee model; from the date of implementation, the validity period for trademarks, whether new applications or renewals, is 10 years.
(2) Different Basis for Obtaining Trademark Rights
Previously, Canadian trademark law, similar to the United States, required that trademark rights be based on use. There were four main ways to apply for a trademark: based on intent to use, actual use, well-known in Canada, and registration in the country of origin:
(1) For trademarks based on actual use, the date of first use in Canada must be stated in the application, which is quite different from China's trademark registration system.
(2) Trademark applications submitted based on intent to use require the submission of a declaration of use after approval, stating that the trademark has been put into use in Canada; otherwise, trademark registration cannot be obtained.
(3) If the application is based on registration in the country of origin, the trademark must be eligible for protection in the home country.
The new Trademark Act will abolish the declaration of use system. Trademark applications submitted or approved after the new law comes into effect, based on intent to use, will no longer require a declaration of use stating the date of first use in Canada. This will greatly facilitate trademark owners' brand development in Canada, but it may also lead to a large number of malicious registrations and illegal hoarding. Therefore, it is recommended that trademark owners consider early brand development in Canada and take effective measures to monitor malicious registrations to prevent their rights from being infringed.
