Canada: Bill Proposing Significant Changes To Canadian Trademark Law Receives Royal Assent

Bill C-31, which contains sweeping amendments to the Canadian Trade-marks Act, received Royal Assent on June 19, 2014. While it may be another six months to a year before the Bill is proclaimed into force and the changes take effect, there are steps that brand owners can take now that may save on government and legal fees and achieve enhanced protection for trademarks.

Key Changes

The amendments in Bill C-31 are intended to harmonize the trademark filing and registration process in Canada with standardized procedures found in two international treaties (the Singapore Treaty and the Nice Agreement), and prepare for the implementation of a third international treaty that will permit access to an international registration scheme (the Madrid Protocol).

The amendments will simplify the trademark application process by eliminating the requirement to specify whether an application is based on use or proposed use of the trademark in Canada, or use and registration of the trademark abroad. Also eliminated is the need to file a Declaration of Use before registration, currently required if an application is based on proposed use in Canada.

However, in order for an application to be valid, the applicant must be using or propose to use the trademark in Canada, and be entitled to use the trademark. In assessing entitlement, prior common law trademark or trade name rights will continue to trump a subsequently filed application or subsequent use of a confusingly similar mark. Importantly, the Trademarks Office will continue to examine applications based on possible confusion with prior pending and registered trademarks, and prior rights owners will retain the ability to oppose an application and attack a registration based on prior use of a confusingly similar trademark or trade name. The ability to invoke a summary procedure to cancel a registration if the trademark has not been used for three consecutive years also remains intact.

In addition, while goods and services will still need to be defined in applications in "ordinary commercial terms" (interpreted to require a higher degree of specificity than in other countries), goods and services also will need to be grouped and classified according to the international Nice Classification scheme established by the Nice Agreement, with the Registrar having final say. The Registrar also will have the discretion to require owners of existing trademark registrations to comply with this requirement.

Another key change is the reduction of the term of a trademark registration (and renewal) from 15 years to 10 years.

Proactive Strategies

Some of the proactive strategies that brand owners can employ now are set out below.

1. Request Renewal Now

The term of registration and renewal will be reduced from 15 years to 10 years, and the implementation of the Nice Classification system may result in the adoption of a class-based government fee system for renewal.

Accordingly, requesting renewal now may result in cost savings, especially for owners of registrations covering multiple classes of goods and services.

Historically, the Trademarks Office permitted registrations to be renewed up to one year in advance of their renewal deadline. However, in May 2014, the Trademarks Office changed its practice and began accepting renewal requests 14 years in advance of renewal deadlines (i.e., registrations due for renewal up to December 2028 inclusive), an attractive option particularly for house marks and other key trademarks. It remains to be seen whether the Office will revert back to its prior practice now that Bill C-31 has received Royal Assent.

2. Keep Allowed Proposed Use Applications Pending Through Extensions

The elimination of the requirement to file a Declaration of Use for proposed use applications will permit owners of allowed proposed use applications to complete the registration process without having to first use the mark in Canada.

Accordingly, if your company or client owns an allowed application and does not anticipate commencing use of the mark in Canada with all the goods and services specified in the application within the next six months to one year, then it may make sense to keep the application pending through extensions of time until the changes take effect.

If no further extensions of time are available, then the registration process should be completed prior to the final deadline, and a new application should be filed for the goods and services with which use in Canada could not yet be declared.

3. Actively Apply to Register Trademarks Now

It is anticipated that the number of trademark filings (particularly by foreign brand owners utilizing the international registration scheme) will increase. Owners of prior rights in unregistered trademarks can only prevent the registration of confusingly similar trademarks by initiating opposition proceedings, which can be costly.

Since the Trademarks Office will continue to examine applications for possible confusion with prior pending or registered marks, applying to register trademarks should block applications for confusingly similar marks at the examination stage. Since opposition costs far exceed registration costs, adopting aggressive filing strategies now may save considerable legal fees. Furthermore, since pending and registered marks are more likely to be caught by trademark clearance searches, filing now may discourage others from adopting confusing similar trademarks.

In addition, the implementation of the Nice Classification system may result in the adoption of a class-based government fee system for filings, and so filing now may also save in government fees.

4. Actively Monitor the Trademark Register

Since the simplification of the registration process and the opportunity to register marks through the Madrid Protocol is likely to increase trademark filings, it will become even more important to actively monitor the trademark register for potentially confusing marks.

The amendments contained in Bill C-31 will significantly impact trademark clearance, registration, and enforcement strategies in Canada. Complicated transitional provisions and co-ordinating amendments that relate to another pending bill (Bill C-8 titled the Combating Counterfeit Products Act ) add another layer of complexity. By taking proactive steps now, brand owners may be able to realize cost savings while achieving maximum protection for their trademarks in Canada.

About BLG

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
Fogler, Rubinoff LLP
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Fogler, Rubinoff LLP
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions