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 opposition.
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 now is.
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.
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