On March 28, 2014, the Canadian government introduced the
Economic Action Plan 2014 Act, No. 1 as part of an omnibus
budget implementation bill. The bill includes significant
amendments to the Trade-marks Act that are designed to put
Canada in a position to adhere to major international trade-mark
treaties, including the Madrid Protocol, the Nice Agreement and the
Continuing the trend set by Bill C-8, the pending Combatting
Counterfeit Products Act, the new bill repeats some amendments
included in the previous bill and includes additional provisions,
repealing or replacing some of the unusual or even unique aspects
of the Canadian Act. For example, a "trade-mark"
will become a "trademark", "wares" will become
"goods" and both associations of similar trade-marks and
the "distinguishing guise" will disappear from Canadian
practice. Among the more specific, and very significant changes to
the Canadian trade-mark regime that are included in the bill are
Filing of applications will be simplified, since applicants for
registration in Canada will no longer need to identify a date of
first use of the mark in this country. Details of use and
registration of the mark abroad will also no longer be
The Nice Classification of goods and services will be
The definition of a trade-mark will be greatly expanded to
cover a "sign or combination of signs" including a word,
a personal name, a design, a letter, a numeral, a colour, a
figurative element, a three-dimensional shape, a hologram, a moving
image, a mode of packaging goods, a sound, a scent, a taste, a
texture and the positioning of a sign.
It will be possible to divide applications.
A Declaration of Use of a mark in Canada will not be required
before the registration process is completed.
The term of registration of a mark will be reduced from 15
years to 10 years.
The full effect of the sweeping amendments to the Canadian
Trade-marks Act, including the effects upon the previous
and newly established rights remain to be fully analyzed and fully
understood, and we will be reporting on these in the coming weeks.
However, it is clear that that many fundamental trade-mark concepts
and practices will change.
The preceding is intended as a timely update on Canadian
intellectual property and technology law. The content is
informational only and does not constitute legal or professional
advice. To obtain such advice, please communicate with our offices
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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