CIPO: Looking Ahead To 2019

22-05-2017

Uldduz Larki

With Canada preparing for changes to its Trademarks Act in 2019, Uldduz Larki talks to Mesmin Pierre, Director General of the Trademarks Branch for the Canadian Intellectual Property Office, about what to expect.

In 2014, the Canadian government passed legislation which will amend the country’s Trademarks Act in 2019. Mesmin Pierre, Director General of the Trademarks Branch for the Canadian Intellectual Property Office (CIPO), says Canada is seeking to accede to five World Intellectual Property Organization treaties: the Singapore Treaty; the Madrid Protocol; the Nice Agreement; the Patent Law Treaty; and the Hague Agreement on Industrial Designs.

Canada made changes to the current system based on some key principles, namely to reduce both costs and administrative burden for the client and to provide more marketplace certainty. Mr. Pierre says that the changes are going to affect the Office significantly, adding: “We’ll have a new legislative framework, which will transform our system. These changes have been made to ensure our users can have access to both our national and an international system.  

“Canadian businesses will be able to take advantage of entering international markets using the Madrid System once Canada joins in 2019. This gives them more flexibility to explore the number of markets they want to enter and lower the cost of doing so,” according to Mr. Pierre.

CIPO is looking at how best to harmonize its system with existing international trademark systems by adopting international best practices, Mr. Pierre explains. Another key driver is the objective to give trademark applicants more flexibility through a choice to either file directly with national registration systems or use the Madrid System when filing an application with CIPO in order to gain trademark protection in international markets.

“The change has been a long process, but that’s not uncommon,” says Mr. Pierre.

CIPO has been working closely with elected officials in a constructive fashion to facilitate Canada’s accession to the treaties. The Office has received strong support from Parliament, as well as other federal government departments.

He adds: “We have been able to work closely with our colleagues from the Department of Justice to amend the Act as appropriate and we are currently working on drafting regulations.

“We will be engaging in extensive consultations and will continue to do so until the law comes into force in early 2019. The key is engagement and regular communication,” he says.

Getting Ready for Change

CIPO is working rigorously to inform trademark applicants and owners so that they are aware of the changes to the trademark law.

According to Mr. Pierre, CIPO is also preparing internally by updating IT systems and training staff on the amended legislation that the Office will implement.

One challenge that has been highlighted is that CIPO’s IT systems need to be upgraded.

“Our system is not as modern as we’d like it to be, and I understand other offices struggle with that too. Technology needs to be up to date.”

Aligning Canada’s trademark regime with accepted international standards and practices will not only help Canadian trademark owners to access foreign markets, but will be equally beneficial for the international community, as non-Canadian trademark owners will be able to access the Canadian trademark system more easily, Mr. Pierre explains.

Trademark owners need to assess the potential impact of the Canadian legislative amendments on their IP strategy, Mr. Pierre explains. The Office has to implement new and amended processes, including new online services, to meet the requirements of the legislative changes.

To prepare for the changes, he says, IP owners should familiarize themselves with how, and more importantly when, the treaties will be implemented in Canada. In addition to the legislative changes required to accede to the treaties, the Canadian parliament has also approved a revised fee structure.

Applicants are currently able to file a trademark application for a flat fee that does not take into account the number of Nice classes. Once the trademark is eligible for registration, the applicant must pay a separate registration fee. The revised fees will include merging the application and registration fees so that the applicant will only have to pay one application fee.

There will also be a new “fee per Nice class” which will provide an incentive for applicants to restrict their trademark applications and renewals to only cover the goods or services that they actually use. These changes are expected to decrease filing fees for two thirds of all trademark applicants.

“Stay informed through our website. We will be sending all communications electronically. We strongly encourage interested parties to subscribe to our newsletters, to receive email updates regarding new or updated information available on our website, and we also recommend following our Twitter feed,” Mr. Pierre concludes.

trademark, Canadian, CIPO, Trademarks, Madrid Protocol, Mesmin Pierre

WIPR