Canada: Entering the Twilight Zone Between Institution and Innovation: Trademark Improvement Initiatives

Last Updated: April 4 2005

By Mary Jane Lemenchick and Kathleen Lemieux (Ottawa)

The last fundamental revision to Canadian trademarks legislation was enacted in 1953 and came into effect in 1954 in the Trade-marks Act. It brought with it, amongst other things, the possibility to transfer a trade-mark with or separately from the goodwill of the business associated with it and introduced the registered user provisions which permitted the licensing of trade-marks. Since 1954, very few amendments have been made to the Act. The Intellectual Property Law Improvement Act came into force in 1993 and most notably abolished the registered user regime in favour of Section 50 as it is known today.

For the past few years, the Canadian Intellectual Property Office ("CIPO") has been assessing the necessity for a number of improvements to current legislation. In response to new trends and considering that there have been legislative amendments to trade-mark legislation by the United Kingdom, Australia and the United States, CIPO has set down proposals for modernizing certain sections of the Canadian Trade-marks Act to account for changing realities of international commerce. These improvements are intended to modernize the Canadian Trade-marks Act and would, it is proposed, "enhance Canada’s competitiveness in the domestic and global marketplaces". On February 24, 2005 CIPO formally invited the intellectual property profession to comment on its proposals for the "Modernization of the Trade-marks Act and Regulations". Some of the more significant proposals for improvement are discussed below.

An initial effort towards incorporating ‘new trends’ in Canadian trademark legislation is the proposal for Canada’s adherence to two Treaties administered by the World Intellectual Property Organization (WIPO), namely, the Protocol Relating to The Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) and the Trademark Law Treaty (TLT). Canada is conspicuous by its absence in both cases.

As applied to Canada, the Madrid Protocol would give applicants for Canadian trade-marks the possibility to have trade-marks protected simultaneously in several countries (International Registration) by filing a single application through CIPO. Adherence to the Madrid Protocol would require some administrative changes within Trademarks Branch of CIPO and certain amendments to the Trade-marks Act, including the removal of the current requirement by applicants to confirm use prior to registration (in the case of proposed use applications). In recognition of the importance of the concept of use to Canada’s trade-mark system, CIPO proposes a scheme that would require a declaration or a demonstration of use of a trade-mark after registration. It is suggested that such a scheme would create a more level playing field for Canadians since, under the current system, foreign applicants can simply rely on use and registration in the foreign country (without being required to show use in Canada) in order to achieve registration.

The TLT was adopted by WIPO in an effort to harmonize trade-mark laws across national jurisdictions. In essence it seeks to simplify administrative procedures including the application process and the processes for updating or amending ownership particulars. It also calls for harmonizing the duration of registration and renewal periods to 10 years. Most notably adherence by Canada to the TLT would require an amendment of current registration and renewal periods from 15 years to 10 years.

In addition to proposing Canada’s implementation of these International Treaties, CIPO has also put forward a number of other suggestions for updating Canadian trademark legislation. Some proposals are more administrative in nature and seek to update the Canadian regime in view of current practices and jurisprudence. A number of proposals, however, are specifically designed to enhance "Canada’s competitiveness" both in Canada and on the international front, and to recognize the evolution of business over the past 50 years.

CIPO’s proposal to remove Section 14 of the Act is one example of CIPO’s efforts to enhance Canada’s competitiveness in Canada. Under the current legislative scheme, foreign applicants that are required to show acquired distinctiveness have a lower threshold to meet under Section 14 than Canadian applicants have under section 12(2) of the Act. With the removal of Section 14, foreign applicants would be subject to the same test applied to Canadian applicants.

An example of a proposal to enhance Canada’s competitiveness in the international marketplace is CIPO’s proposal to amend the Trade-marks Act to formally recognize Consent Agreements between parties that are seeking to overcome an objection based on confusion. Under the current legislative scheme and practice, favourable consideration to such agreements is rarely given, particularly where the trademarks at issue are substantially identical and where goods or services are considered to overlap. Such an amendment would recognize that parties to a Consent Agreement may be in a better position to understand market realities and determine the likelihood of confusion resulting from the use of similar trade-marks.

Finally, the improvements proposed by CIPO also include novel ideas such as the consideration of non-traditional trade-marks. Keeping in line with traditional concepts of trade-mark law, current Canadian legislation remains tied to the notion of trade-marks as visual representations. This notion has effectively prevented the consideration of non-traditional trade-marks such as sounds, motions, animations, holograms, scents and tastes. Other countries such as the United States and the United Kingdom have amended their trade-mark regimes to allow the registration of certain non-traditional trade-marks. Considering that non-traditional trade-marks may become the branding norm rather than the exception, CIPO is reviewing amendments to the trade-mark legislation to introduce a definition of trade-mark that may include sounds, smells or scents, animation or holograms for example.

Modern time are exciting times! With a clear emphasis on the modern and the efficient, and with the upcoming diplomatic conference to revise the TLT in 2006 in mind, CIPO is urging, with renewed vigour, the consideration of its proposals to ‘renovate’ Canada’s trademark regime and to ensure Canada’s presence in a "modern marketplace framework".

This article originally appeared in the April 22, 2005, issue of The Lawyers Weekl.y

Mary Jane Lemenchick is a partner at Borden Ladner Gervais’ Ottawa office. Ms. Lemenchick is a registered Trade-mark Agent, and is a member of the firm’s Intellectual Property and Technology Group.

Kathleen Lemieux is an associate at Borden Ladner Gervais LLP’s Ottawa office. Ms. Lemieux is a lawyer and registered Trademark Agent, and is a member of the firm’s Intellectual Property Agency and Litigation Groups. 

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