Canada: Trading Trade-mark For Trademark And Its International Effects: A Brief Overview Of Bill C-31

Last Updated: April 10 2014
Article by Nathanial Marshall and Adam Bata

Substantial changes to Canadian trade-mark laws may soon come into force. On March 28, 2014, Canada's newly appointed Minister of Finance, Joe Oliver, tabled an omnibus budget implementation bill, Bill C-31, titled Economic Action Plan 2014 Act, No. 1. Bill C-31 will make changes to numerous pieces of legislation, and deals with a range of issues from food safety to the remuneration for judges. Of particular note to readers of The Medium are the substantial reforms to Canadian trade-mark laws, which are the second set of proposed changes to the Trade-marks Act in the last year (the first set being introduced in Bill C-8, Combating Counterfeit Products Act).

The stated intention of the amendments is to bring the Trade-marks Act in line with the international trade-mark regimes outlined in the Singapore Treaty and Nice Agreement, while preparing for the Madrid Protocol a third treaty that will give Canadian brand owners access to an international trademark registration scheme. For a myriad of reasons, Canada's current trade-mark laws do not comply with these international agreements. Bringing Canadian trade-mark laws into accordance with these agreements will, in theory, allow Canadian businesses to synchronize their filing and registration processes with the international trademark requirements.

The first change that many will notice in the amendments is the drop of the hyphen from "trade-mark". Although this is a seemingly minor aesthetic change, it ensures Canadian terminology is consistent with the terms used in the international agreements and is intended to create uniformity in trademark laws with other signatory jurisdictions. Moreover, the term "wares" will be replaced with "goods", which is another change that will ensure consistency with both the United States and the international agreements.

Other proposed changes, however, may not be so uniformly welcomed. For example, applicants will no longer need to indicate whether they are making an application for the use or proposed use of a trademark, or for use and registration of the trademark outside of Canada. Additionally, the proposed amendments will also eliminate the need to file a declaration of use before registration if the use is to take place within Canada. While these changes will arguably simplify the process for filing a trademark application by doing away with some of the content requirements that currently exist, some commentary has suggested that this will cause a drastic increase in the number of trademark registrations that may have the effect of 'clogging' the system.

Despite the new procedure for trademark applications, use will still be a critical feature of Canadian law moving forward. Trademark registrations may still be summarily cancelled if the trademark has not been used for three consecutive years and individuals will continue to have the right to oppose an application for registration based on their prior use. Further, new grounds of opposition are proposed, including that the applicant did not have use or an intent to use a mark when it was filed. We expect that if these amendments are passed there will be far more trademark oppositions within Canada, adding potentially significant costs for Canadian businesses. Trademark owners will also experience cost increases due to the fact that the trademark protection term has been reduced to 10 years from 15 years, thus requiring more frequent renewals.

Bill C-31 will introduce some new requirements to trademark applications. Applicants may be required to provide evidence establishing their mark is distinctive at the filing date under revised section 32. Moreover, the Nice Agreement requires that goods and services be grouped according to their international classification. The Trade-marks Act will adopt this condition, with the Registrar having the final say on the correct classification. Current trademarks owners should be aware that the Registrar will also have the power to require their registrations to  comply with these requirements. As Nice classifications will be required with trademark applications under the new system, it is conceivable that we end up with a fee-per-class system, similar to the standard used in most Nice countries.

Overall, the proposed changes to the Trade-marks Act contained in Bill C-31 will bring Canadian trademark law into accordance with international trademark law. However, in doing so, it is clear that Canadian businesses will face additional costs in complying with the international trademark regime. It is possible that some of these changes may be removed from the Bill as it has yet to become law but, as it currently stands, it is clear that several traditional features of Canadian trademark law will soon cease to exist.

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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Nathanial Marshall
Adam Bata
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