The Canadian Government has buried significant amendments to the
Trade-Marks Act in Bill C-31, the Economic Action Plan
2014, No 1. A coalition of trade-mark lawyers and firms, including
Norton Rose Fulbright, are participating in submissions to the
Government to object to this action which has been done without
apparent consultation with Canadian businesses or persons
experienced in the trade-marks field.
Proposals to overhaul the Canadian Trade-marks Act to
eliminate the requirement to prove use before registration of a
trade-mark are contained in this massive omnibus budget bill.
If passed any applicant could register a trademark in Canada
without any need to use the trademark in Canada or abroad prior to
registration. An applicant may file and register a trade-mark in
Canada for an unlimited list of goods and services merely on a
stated intention to use the mark in Canada.. No date of use will be
required to be provided.
Oppositions can still be filed based on earlier use or
application (prior "entitlement") but as the proposed
legislation will not require persons to state whether they have
used the trade-mark and the date of such use, it will be impossible
to know whether a mark has prior rights when it is advertised for
These amendments are bound to encourage the hijacking of marks
for trolling purposes with no apparent benefit to legitimate
Canadian businesses. Further they are almost certain to lead to
increased need for trade-mark oppositions to determine priority of
rights which will not be apparent from the public record.
Without the requirement for use, the trade-marks register is
bound to become increasingly cluttered which will make
searching and clearance even more difficult and expensive than it
The Government has introduced these changes with the stated
intention of adhering to the Nice, Madrid and Singapore Treaties
and while some of the amendments do relate to these treaties many
of the most fundamental changes have nothing to do with adherence
to these Treaties.
Among the other proposed amendments the Nice Classification is
introduced into the Act, and applicants will have to describe goods
and services both in ordinary commercial terms as they do now, and
also grouped by the Nice Classification. This will likely also
increase application fees if added fees are added for each class of
goods to be covered.
Norton Rose Fulbright Canada LLP
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Norton Rose Fulbright Canada LLP, Norton Rose Fulbright South
Africa (incorporated as Deneys Reitz Inc) and Fulbright &
Jaworski LLP, each of which is a separate legal entity, are members
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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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