Bill C-31, one of two Bills currently before the Canadian Parliament that would amend Canada's trademark legislation, passed a significant milestone on the way to implementation by receiving Royal Assent on June 19, 2014. As expected, the Bill passed without significant change and paves the way for Canada's adherence to the Madrid Protocol, Singapore Treaty and Nice Agreement, while also making other significant changes to the legislation. In announcing Royal Assent, the Canadian Intellectual Property Office ("CIPO") made the following statement:
By joining international IP treaties, the Government is delivering on its continuing commitment to modernize Canada's intellectual property regime. Canadian businesses will have access to a trademark regime that is aligned with international best practices, that reduces costs and administrative burden, that facilitates their expansion in foreign markets, and that attracts foreign investment to Canada.
The new legislation is expected to be fully proclaimed into force within approximately 12 months. Some delay is anticipated due to the need to draft new Regulations, which will include public consultation, and the implementation of new IT systems at the CIPO, in particular to accommodate filings under the Madrid Protocol.
Adherence to and implementation of the Madrid Protocol will permit Canadian applicants to seek international registrations ("IR") in any of the current 92 signatory members. Similarly, foreign applicants will be permitted to designate Canada under a Madrid filing. A Madrid filing and subsequent IR can have the benefit of reducing costs in situations of multiple foreign applications but, depending upon certain circumstances, may not always be the best option.
In addition to adherence to the Madrid Protocol, the new legislation provides for adoption of the international Nice Classification system in Canada. Prior to the coming into force of these provisions, applicants should consider grouping goods and services according to the Nice Classification as it is anticipated that the Trademarks Office will eventually require this step for all applications and registrations.
Registration will also become possible for non-traditional marks such as tastes, smells, textures, and holograms. However, applicants should be prepared to evidence distinctiveness for such non-traditional marks as of the date of filing under the new legislation.
Additionally, examiners will be able to raise a limited distinctiveness objection during examination if, in the examiner's preliminary view, the mark lacks inherent distinctiveness. This change will apply to all marks and not just non-traditional marks.
Among the more significant changes to the legislation, apart from adherence to the international treaties, is the abolition of Canada's requirement for there to be use of the mark in Canada in association with each of the claimed goods and services prior to registration. In the future, all applications will issue to registration after allowance irrespective of whether the application was based upon proposed use or use. Registrations will thereafter have a three year immunity from summary cancellation proceedings for non-use. The new system will decrease costs for applicants of proposed use applications by no longer requiring declarations of use and the inevitable extensions of time required for pending use. However, eliminating the requirement for applicants to state whether use has commenced and the date of first use will likely lead to increased costs in determining whether and on what grounds to potentially oppose or challenge an application. Because being first to file will have advantages under the new provisions and because of the abolition of the requirement to claim or declare use prior to obtaining a registration, trademark owners may wish to consider filing applications now for broadened categories of goods and services with their marks, given that the Registry is expected to become more crowded.
Other changes will include applicants being permitted to divide applications. Such "divisional applications" will be helpful in situations where an Examiner or opponent takes issue with only part of an application, allowing the uncontested portion to proceed through to registration.
Renewal terms will also become 10 years instead of the current 15 year term. There is some debate as to whether a request now to renew a registration set to expire after implementation will result in a 10 or 15 year term. The better view seems to be that if the effective renewal date is post-implementation, the term will be 10 years regardless of whether the request to renew was made pre-implementation.
Once in force, the new provisions will apply to any application which has not yet passed through examination (and opposition) and been allowed by the Trademarks Office. As a result, it may be advantageous in some cases to attempt to expedite the filing or prosecution of applications prior to the coming into force of the new provisions.
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