IPPro The Internet Issue 140

O Canada
Grant Lynds, president of the Intellectual Property Institute of Canada
provides an overview of upcoming changes to Canada’s trademark law
and how brands should adapt their strategies
Ben Wodecki reports
What are the biggest changes coming to Canada’s trademark law?
How will these changes affect Canadian companies?
The biggest change we have on our horizon is the implementation
of our legislation to implement three treaties, the Singapore Treaty
on the Law of Trademarks, the Nice Agreement Concerning the
International Classification of Goods and Services for the Purposes
of the Registration of Marks, and the Protocol Relating to the Madrid
Agreement Concerning the International Registration of Marks. The
significant change is the implementation of Madrid Protocol into
Canada. We’re a little bit later to the party than most people but we’ll
get there and the current forecast is that the agreement will be in
force by 2019.
Products Act. We’re still working within the domain or the regime
of that legislation, which is still fairly recent in trying to see if it has
provisions that are effective in tackling counterfeits.
To date, there have been very few seizures under the provisions of that
legislation. Much of the commentary is focused on Canada having a
less than robust regime under that legislation for intercepting and
detaining counterfeit goods that come into Canada.
What is the biggest problem area for Canada in terms of counterfeits?
We’re looking at the US Trade Representative’s Special 301 Report,
which brought some concerns to Canada over in-transit goods—
essentially goods being shipped through Canada, not with a final
destination of Canada, that come from another country and go
through Canada and then onward to the US or other countries.
Canadian companies are going to be more aware that they have the
opportunity to use the Madrid Protocol should they choose to file
outside of Canada, and that there’s a more cost effective and leaner
route to engage trademark systems outside Canada and vice versa.
The companies outside Canada that are looking to file inside Canada,
will see that being inside Canada gives them a more cost-effective
route to consider filing via the Madrid Protocol.
Do the new laws hold any provisions aimed at tackling counterfeits?
Our main anti-counterfeiting measures are still rooted in legislation
that came into force fairly recently in 2015, the Combating Counterfeit
That is not something that the Canadian government has the ability
to detain and inspect under our Request for Assistance programme,
but that is what the US government has commented on. I know
that hasn’t changed and my only question there is whether or not is
whether the US will continue to comment on that in its 2018 report.
How should brands adapt their strategies to prepare for these
legislative changes?
Once the new legislation to implement the treaties comes into
force, the definition of a trademark will be broader than the current
definition. While some of the types of trademarks are already
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