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The New NAFTA: Trademark and Industrial Design Changes Under the United States-Mexico-Canada Agreement

Mexico, the United States and Canada have agreed on the text of a new trade agreement, known as the United States-Mexico-Canada Agreement (“USMCA”), to replace NAFTA. The USMCA remains subject to final review, but the full text of the agreement is now available online.

Chapter 20 of the USMCA addresses intellectual property. The chapter is substantially longer and more detailed than the predecessor intellectual property chapter in NAFTA, a copy of which can be found here.

With respect to trademarks, the main change is that the USMCA mandates that scent and sound marks be eligible for registration. Under NAFTA, parties (i.e. the signatory countries) were permitted to require that a mark be “visually perceptible” as a condition of registrability . The USMCA states that parties cannot require that a sign be visually perceptible as a condition of registrability and cannot deny registration of a trademark only on the ground that the sign of which it is composed is a sound. The USMCA also states that each party shall make best efforts to register scent marks (Art. 20.C.1). Canada already allows registration of sound marks and amendments to the Trade-marks Act from 2014, which have not yet come into force, expanded the definition of trademarks to include scents and tastes. As a result, the new USMCA requirements will not require changes to existing Canadian law.

With respect to industrial designs, the USMCA increases the term of protection from 10 years to 15 years. (Art. 20.G.4)