In a bold move, on March 28, 2014, the Canadian government
tabled its omnibus budget implementation act, Economic Action Plan
2014 Act, No.1, which makes changes to close to 40 pieces of
legislation, and incorporates significant changes to the
Trade-marks Act. The proposed amendments to the
Trade-marks Act, some of which may be considered long
overdue, are intended to bring Canada into compliance with
international trade-mark treaties, and specifically the Madrid
Protocol, the Nice Agreement and the Singapore Treaty. The sweeping
changes proposed in this new bill follow on the heels of additional
major changes proposed by the Combatting Counterfeit Products
Act (Bill C-8), currently awaiting its final vote with
The changes incorporated in the budget implementation bill to
some extent duplicate those already proposed by Bill C-8, but also
make additional changes which will significantly impact
Canada's current trade-mark practice, including the following
important substantive changes:
the definition of a trade-mark will be expanded to include a
broader range of indicia of source
adoption of the Nice Classification of goods and services
applicants will be allowed to divide applications
confusingly similar trade-marks, originally deemed registrable
only if owned by a single entity, will no longer be required to be
"associated" and therefore will be independently
the term of registration will be reduced from 15 years to 10
The application process is also being streamlined, with an
applicant for a trade-mark registration no longer needing to
provide a date of first use, provide information on use and
registration abroad (when claimed), nor file a declaration of use
prior to registration. The impact of these "streamlining"
provisions remains to be seen, but there are certainly concerns
that it may become more difficult for trade-mark owners and
applicants in Canada to understand the implication and strength of
trade-marks appearing on the Register, without "use"
information readily available to assist in considerations of prior
use and strength of the respective rights involved.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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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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