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
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
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
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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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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