The United States, Mexico, and Canada have reached an agreement on a modernized, high-standard Intellectual Property (IP) chapter that provides strong and effective protection and enforcement of IP rights critical to driving innovation, creating economic growth, and supporting American jobs.
Key Highlights: Protections for United States Innovators and Creators
The new IP Chapter will:
Require full national treatment for copyright and related rights so United States creators are not deprived of the same protections that domestic creators receive in a foreign market.
Continue to provide strong patent protection for innovators by enshrining patentability standards and patent office best practices to ensure that United States innovators, including small- and medium-sized businesses, are able to protect their inventions with patents.
Include strong protection for pharmaceutical and agricultural innovators.
Require a minimum copyright term of life of the author plus 70 years, and for those works with a copyright term that is not based on the life of a person, a minimum of 75 years after first authorized publication.
Require strong standards against the circumvention of technological protection measures that often protect works such as digital music, movies, and books.
Establish appropriate copyright safe harbors to provide protection for IP and predictability for legitimate enterprises that do not directly benefit from the infringement, consistent with United States law.
Provide important procedural safeguards for recognition of new geographical indications (GIs), including strong standards for protection against issuances of GIs that would prevent United States producers from using common names, as well as establish a mechanism for consultation between the Parties on future GIs pursuant to international agreements.
Enhance provisions for protecting trademarks, including well-known marks, to help companies that have invested effort and resources into establishing goodwill for their brands.
Key Achievement: Most Comprehensive Enforcement Provisions of Any Trade Agreement
For the first time, a trade agreement will require all of the following:
Ex officio authority for law enforcement officials to stop suspected counterfeit or pirated goods at every phase of entering, exiting, and transiting through the territory of any Party.
Express recognition that IP enforcement procedures must be available for the digital environment for trademark and copyright or related rights infringement.
Meaningful criminal procedures and penalties for unauthorized camcording of movies, which is a significant source of pirated movies online.
Civil and criminal penalties for satellite and cable signal theft.
Broad protection against trade secret theft, including against state-owned enterprises.
Key Achievement: Strongest Standards of Protection for Trade Secrets of Any Prior FTA
In particular, the Chapter has the most robust protection for trade secrets of any prior United States trade agreement. It includes all of the following protections against misappropriation of trade secrets, including by state-owned enterprises: civil procedures and remedies, criminal procedures and penalties, prohibitions against impeding licensing of trade secrets, judicial procedures to prevent disclosure of trade secrets during the litigation process, and penalties for government officials for the unauthorized disclosure of trade secrets.
January 1, 2021 fee adjustment: On January 1, 2021, the fees for the services outlined below will increase by 2%, in accordance with the Service Fees Act. Note that not all fees are subject to the annual adjustment.
Application for the registration of a trademark;
Statement of opposition;
Application to extend the statement of goods or services;
Request for the giving of one or more notices under subsections 44(1) or 45(1) of the Trademarks Act;
Renewal of a registered trademark;
Issuance of a certificate of registration under item 15 of the Tariff of Fees of the former Trade‑marks Regulations;
Trademark agent qualifying examination;
Request for a name to be entered, maintained or reinstated on the list of trademark agents.
Effective on May 20, 2020, we are starting a new initiative. You or your appointed agent might get a call from a trademark examiner asking for:Verbal permission to amend your application. A trademark examiner might call to ask for verbal permission to:add missing disclaimers related to the use of a trademarked colour system or the 11-point maple leaf. An electronic revised trademark application. A trademark examiner might call to ask you to send an amended trademark application, if:a registration symbol (example: “TM” or “MC”) needs to be removedtypographical errors need to be correctedthe entire mark is disclaimedpriority claims are not properly linked to an amended statement of goods and servicesthe statement of goods and services is improperly separated by punctuation (example: a displaced semicolon)the Nice Classification is incorrecta colour claim is incomplete
As of Monday, June 17, brand owners filing trademark applications will be paying more, as the amended Trade-marks Act and the new Trademarks Regulations come into force.At present, to file a trademark application, “regardless of the number of goods and services, regardless of the number of classes,” the fee is $250, says Janet Fuhrer of Ridout & Maybee LLP in Ottawa. As of Monday, she says, the base fee will be $330 for one class of goods and services and $100 for each additional class of services.
The following online services will be unavailable from Thursday, June 13, 2019 at 00:00am EDT to Monday, June 17, 2019 at 06:00am EDT for system upgrades and enhancements:Trademarks e-FilingTrademarks Registration and RenewalFile a Statement of Opposition or Request an Extension of TimeEnter a Name to the List of Trademark Agents;Trademarks DatabaseTrademarks Journal
New trademark act heralds dramatic change, fee increases. With June 17, 2019, quickly approaching, the new Canadian Trade-marks Act is about to dramatically change the brand protection landscape.The good news is that the new legislative changes will actually bring Canada in line with many international treaties and make it easier to simultaneously file international trademark applications. The government also made wise and potentially helpful modifications to expand the definition for trademarks and give applicants the ability to divide applications, which will be of strategic assistance during prosecution and in the event of an opposition.