As reported in our
Alert of April 1, 2014, the Canadian government has been moving
quickly to make amendments to the Trademarks Act.
Bill C-31, the omnibus budget implementation bill, which
includes significant and several controversial changes to the
trademarks regime in Canada, passed Third Reading in the Senate on
June 18, 2014, and has now received Royal Assent.
Three key changes to note are:
there will be no need to confirm use in Canada prior to
registration. Registrations will issue once the period for
oppositions has passed, without the need to file a Declaration of
Use or a specimen of use. Neither applicants nor registrants are
required under the Act to indicate a date of first use. We
understand that regulations implementing the Act may
ultimately incorporate the requirement to provide a first use date,
but it is unclear at what stage that information would be provided,
and applicants will nevertheless be able to obtain registrations
without use anywhere in the world.
Canada will finally be adopting the Nice Classification of
goods and services. Trademark applications may become more
expensive to prosecute, particularly for Canadian entities who have
never before had to classify their goods and services using the
Nice system. Also, applications may ultimately be more expensive to
file in Canada, if a fee per class system is implemented, which we
understand is under discussion.
the term of registration will be decreased from 15 years to 10
years. It has yet to be determined whether the registration fee
will decrease accordingly, although we understand that may be the
In the wake of these substantial changes, the new Canadian
trademark landscape is likely to be fraught with uncertainty in the
short term, though hopefully the regulations will provide further
guidance to business owners for navigating the new regime. In the
meantime, given that the question is now when, rather than if,
these changes will be implemented, we recommend that businesses
both inside and outside of Canada carefully consider where they
stand vis-à-vis trademark protection, and whether there is
additional protection that should be sought prior to implementation
of these sweeping changes, particularly given the related potential
increase in costs.
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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