Order Fixing June 17 and 18, 2019 as the Days on which Certain Provisions of the three Acts Come into Force: SI/2018-100
Canada Gazette, Part II, Volume 152, Number 23
SI/2018-100 November 14, 2018
ECONOMIC ACTION PLAN 2014 ACT, NO. 1
COMBATING COUNTERFEIT PRODUCTS ACT
ECONOMIC ACTION PLAN 2015 ACT, NO. 1
Order Fixing June 17 and 18, 2019 as the Days on which Certain Provisions of the three Acts Come into Force
P.C. 2018-1329 October 29, 2018
Her Excellency the Governor General in Council, on the recommendation of the Minister of Industry,
- (a) pursuant to subsections 368(1) and (2) of the Economic Action Plan 2014 Act, No. 1, chapter 20 of the Statutes of Canada, 2014, fixes June 17, 2019 as the day on which Division 25 of Part 6 of that Act, other than sections 358.1, 358.2 and 367, comes into force and fixes June 18, 2019 as the day on which section 358.2 of that Act comes into force;
- (b) pursuant to subsections 63(1) and (3) of the Combating Counterfeit Products Act, chapter 32 of the Statutes of Canada, 2014, fixes June 17, 2019 as the day on which subsection 7(3) and sections 23, 48 and 57 of that Act come into force and fixes June 18, 2019 as the day on which section 58 of that Act comes into force; and
- (c) pursuant to subsection 72(3) of the Economic Action Plan 2015 Act, No. 1, chapter 36 of the Statutes of Canada, 2015, fixes June 17, 2019 as the day on which section 67 and subsection 69(2) of that Act come into force.
(This note is not part of the Order.)
The Order fixes June 17, 2019, as the day on which certain provisions, as specified in the Order, of the Economic Action Plan 2014 Act, No. 1, the Combating Counterfeit Products Act, and the Economic Action Plan 2015 Act, No. 1, come into force and fixes June 18, 2019, as the day on which a section of the Economic Action Plan 2014 Act, No. 1 and a section of the Combating Counterfeit Products Act come into force
The objective of the Order is to establish the coming into force of amendments to modernize Canada’s legislative framework for trademarks and the coming into force of amendments to the Trade-marks Act to allow for the implementation of the Singapore Treaty on the Law of Trademarks (Singapore Treaty); the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol); and the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement).
Currently, Canadian businesses wishing to register their trademarks in more than one country must learn the administrative requirements of each intellectual property (IP) office and file a separate application in each country where protection is sought. This is a complex, costly and time-consuming process. Foreign businesses must also spend time and money researching the Canadian system, which may delay or dissuade them from entering the Canadian marketplace. Canada can simplify this process for applicants by joining the treaties, which would align Canada’s trademark regime with international norms and provide access to a single-window international trademark registration system that would allow registration in over 100 jurisdictions through one application.
The treaties are agreements of the World Intellectual Property Organization (WIPO) that are designed to simplify and harmonize administrative practices among national and regional IP offices. The Madrid Protocol governs an international trademark registration system that allows applicants to seek protection in multiple countries through a single application, filed through the International Bureau of WIPO. The Singapore Treaty is a trademark law treaty that simplifies and standardizes the administrative requirements and procedures of the trademark offices of member countries; however, it does not cover elements of substantive trademark law (e.g. whether a trademark distinguishes the owner’s goods or services from those of others). The Nice Agreement governs a standardized classification system for goods and services applied for the registration of trademarks (the Nice Classification). Both the Singapore Treaty and Madrid Protocol require use of the Nice Classification.
Consistent with the Policy on Tabling of Treaties in Parliament, the three trademark treaties were tabled in the House of Commons on January 27, 2014; the required 21 sitting day tabling period was completed on March 4, 2014. No comments were received during the tabling period.
Amendments to the Trade-marks Act, required for accession to the treaties, received royal assent. While some of these amendments are directly dictated by the requirements of the treaties (e.g. adopting the Nice Classification system), others are required to avoid a “dual track” system wherein, for example, international applications filed through the Madrid Protocol would be assessed under one standard and Canadian applications filed domestically would be assessed under another. The legislative changes also provided authority to make regulations carrying into effect the Madrid Protocol and the Singapore Treaty.
Since royal assent to the Trade-marks Act amendments was granted, extensive consultations with stakeholders and the WIPO have been held; the steps necessary to satisfy the formal requirements of acceding to the treaties have been undertaken; a revised version of the draft Trade-marks Regulations has been drafted; and the Canadian Intellectual Property Office (CIPO) has updated its intellectual technology systems. This order will bring the amended Act into force on the day specified earlier, providing the authority for the new Regulations to come into force on that day as well.
Budget 2017 launched the Innovation and Skills Plan with the goal of making Canada a world-leading centre of innovation. A well-functioning IP regime, including a modern framework for trademarks, is a foundational element of innovation and economic growth. The Government announced that, as part of the Innovation and Skills Plan, it would develop a new Intellectual Property Strategy to help ensure that Canada’s IP regime is modern and robust and supports Canadian innovators in the 21st century. Acceding to the three international trademark treaties and modernizing the trademark framework will support these objectives by improving Canada’s trademark framework, further aligning it with international practices and reducing the administrative burden for innovative Canadian businesses.
The costs of bringing into force these sections of the Economic Action Plan 2014 Act, No. 1 and the Economic Action Plan 2015 Act, No. 1, will be managed within the existing resources of CIPO.
CIPO will implement a proactive communication plan to promote the overall changes to the Trade-marks Act and Trade-marks Regulations; the plan includes Canada’s accession to the three trademark treaties and signals to interested stakeholders the coming-into-force dates fixed in the Order as well as the coming-into-force date of the Regulations. CIPO will focus communication efforts on its website, through social media and targeted engagement with key stakeholders.
These amendments do not have federal-provincial-territorial implications for Canada.
CIPO has actively engaged with key stakeholders (i.e. IP agents who are regular users of the Canadian trademark system) about the legislative and regulatory changes necessary to accede to these treaties. CIPO consulted a group of IP agents on proposed changes to the Act and, where possible, addressed the issues raised. CIPO has also continued to engage key stakeholders as well as the general public throughout the regulatory development process.
Canadian Intellectual Property Office
Innovation, Science and Economic Development Canada