What is the Singapore Treaty?

The Singapore Treaty simplifies and standardizes many of the administrative procedures relating to the registration of trademarks, so as to create a more user-friendly and efficient process for applicants and trademark owners. In order for Canada to ratify the Singapore Treaty, Bill C-31 introduces extensive amendments to the Trade-marks Act , which will require corresponding regulatory changes to implement.

How will the Singapore Treaty affect Canadian Trademark Law and Procedure?

The following are some of the key proposed amendments, most of which extend from the Singapore Treaty.

I. Simplified Trademark Applications

A trademark applicant will no longer be required to specify the date of first use of a trademark in association with each of the goods and services listed in an application or file a declaration of use prior to registration. This proposed change is a significant departure from our existing trademark system and has received mixed reviews.

II. Expanding the Role and Responsibilities of Trademark Agents

Trademark agents will be permitted to represent parties in any business before the Trademarks Office, including expungement for non-use proceedings. In addition, trademark agents who are Canadian residents will now have the ability to appoint an associate trademark agent.

III. Communications with the Trademarks Office

The proposed changes will permit multiple people to be named as applicant in a trademark application; however, a single address for correspondence must be provided. In addition, there will be a streamlined approach to correspondence with the Office of the Registrar of Trademarks (the “Registrar”), which will conceivably allow a variety of actions to be taken in respect of multiple files with just one piece of correspondence. Another notable change affects the publication of trademark applications, which will now be published directly on the Canadian Intellectual Property Office’s website, instead of in the Trade-marks Journal.

IV. Fees and Remedying Default

There will be more opportunities for trademark applicants to remedy a default or failure to respond to a Registrar’s notice. More specifically, the Registrar will have the ability to waive fees at its discretion and the current practice of providing an applicant with two-months’ to remedy a default or failure to respond to the Registrar will be codified. Moreover, one application fee, which will include applicable fees for each class of goods or services under the Nice Classification at the time of filing, will replace the current practice of having separate application and registration fees, which do not currently depend on the number of classes listed in the application.

V. Amendment and Transfer of Trademark Applications

Prior to the registration of a trademark and subject to certain exceptions, a trademark application may be amended to correct errors relating to the identity of the applicant. Furthermore, so long as the trademark remains substantially the same, the description or representation of a trademark can be modified before the application is advertised.

In addition, submitting evidence of a transfer of an application or registration will no longer be required.

VI. Divisional Applications

It will be possible to split a trademark application into two or more applications. This will conceivably allow a trademark to proceed to registration in an expedited manner, where goods and services that are not the subject of objections or opposition during prosecution could be separated from those that are. The proposed amendments will also allow divisional applications that have become registered to be merged back together into one registration.

VII. Expanded Definition of Trademarks

Non-traditional trademarks, such as holograms, moving images, sounds, colours, and scents, some of which were previously prescribed through practice notices, will be codified into the new law.

Need Help?
Contact our team at Parlee McLaws:

Elen L. Bereket – Edmonton Office – (780) 423 8501 – ebereket@parlee.com