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 Parliament.

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 transferrable
  • the term of registration will be reduced from 15 years to 10 years

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.

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