International Context

International Context

Canada is in a transition phase with respect to the international trademark scene. While we have long been part of the Paris Convention and the WTO, we have not yet acceded to other more recent international treaties. The Canadian Trademarks Act and the accompanying regulations and administrative procedures have been amended and revised, with more changes to come as Canada accedes to the Madrid Protocol and other treaties.

Paris Convention

Canada is a signator to the Paris Convention. This ensures national treatment and priority rights to applicants from other member states, such as the U.S. Thus, any person who has filed a trademark application in the U.S. has the right to do so in Canada. Also, if the application is filed in Canada within six months of the original application date the applicant may, by relying on the original application, obtain the filing date of the original application (priority status).

World Trade Organization (WTO) and TRIPS

Canada is a member of the WTO and hence of the Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS). For example, geographical indications for wine can be protected in Canada.

Madrid Protocol

Canada is not currently a member of the Madrid Protocol, but is likely to accede to the Protocol in 2019.

Nice Classification

Canada does not use classes in its trademark examination process at this time, but the applicants do have an option to classify their goods and services into international classes. Canada is expected to join the Nice Agreement once the appropriate Regulations have come into force, at which point classes will become mandatory as they are in the U.S. and elsewhere. It is quite likely that the government fees will increase at that time.