Author: Marsha Cadogan, PhD (Intellectual Property Rights Law)
Trade-marks are indication of source, they convey specific information about a product or service to consumer markets, which help to differentiate one competitor’s goods or services from another. Trade-marks may also be great for building brand value, especially if the mark is associated with a well-known product, or one that is increasingly gaining popularity in consumer markets.
Preferential free trade agreements (FTA) are trade arrangements between two or more countries pertaining to subsidies, investments, customs, financial regulation and increasingly, intellectual property rights. More popular FTAs include the Comprehensive Economic and Trade Agreement (CETA), the United States, Mexico and Canada Agreement (USMCA), and the Regional Comprehensive Economic Partnership Agreement (RCEP). But there are many more. According to the World Trade Organization report on regional trade agreements, 303 FTAs are in force, as of January 2020.
Relationship between Trademark law and Preferential Free Trade Agreements
Like most other types of law, aspects of trademark rights evolves over time. Changes may be driven by domestic interest in changing the scope of rights. Changes in trademark rights may also be influenced by commitments made in the IP provisions of FTAs. For example, the ratification of CETA recently led to a few changes in Canada’s Trademark law. One of the commitments of CETA is that the parties (the European Union and Canada) would commit to signing on to the Singapore Treaty, the Madrid Protocol, and the Nice Classification System. This was recently done, impacting substantive and procedural changes to Canada’s Trademark Law.
Practical Impacts
- By way of CETA’s IP commitments, Canada changed its Trademark Law to allow for the international registration of trademarks by use of one application (the Madrid Protocol).
- Renewal of trademarks also changed from fifteen to ten years, meaning that Canada will now provide trademark protection for ten-year terms only. The term reduction brings Canada’s trademark rights in line with the trademark period recognized under the Madrid Protocol, which provides international trademark registrations for ten year terms. Trademark terms still differ across some jurisdictions who are not party to the Madrid Protocol (for example, Guyana’s trademark term is seven years, renewable for fourteen years thereafter). Entrepreneurs seeking international registrations need to be aware of which jurisdictions their trademarks will be valid in, and in which other jurisdictions registrations should be sought for separately.
- Now formally recognizes non-traditional marks as trademarks, such as sounds, scents, moving images and holograms via the Singapore Treaty. This treaty is a commitment that each party to CETA has to comply with, as a term of the trade agreement.
- Canada has also joined an international goods and services classification system (the Nice Agreement Concerning the International Classification of Goods and Services for the purposes of the Registration of Marks) which uses 45 general classes to group and classify registered trademark goods and services. The intent of the system is that by internationally harmonizing how trademarked goods and services are classified, it will bring consistency in classification terms used in the administration of trademark rights internationally. This change is reflected under the he Trade-marks act by requiring that trademark owners register their products by reference to specific general classes used in the Nice Agreement. For example, under the Nice system, cosmetic products are registered under class 3, but dietary products with a cosmetic effect are registered under class 5. With different classification numbers covering products with varied uses, business owners registering products in international markets will need to pay separate fees for each class they choose to register their products in.
What does this mean for your business? Knowing your markets IP rules and their roots are important, it helps to set a sound framework for how your products and services will operate in domestic and foreign jurisdictions. Knowledge of the implications of ratified trade agreements or on-going trade negotiations on your IP also helps you to forecast how changes in IP rules will impact your bottom dollar in vulnerable markets.
