Earlier this year, the Canadian government introduced the first
procedural step towards ratification and implementation of five
intellectual property law treaties in order to align Canadian
practice with most other countries in the world. The treaties
The Madrid Protocol, designed to assist trade-mark owners in
registering their marks in multiple jurisdictions by filing a
single international application;
The Singapore Treaty, harmonizing administrative procedures
The Nice Agreement, setting out a classification system of
goods and services in trade-mark applications;
The Geneva Act of the Hague Agreement Concerning the
International Registration of Industrial Designs
The Patent Law Treaty.
Amendments to the Trade-marks Act
The Canadian government also recently enacted the Economic
Action Plan 2014 Act, No. 1 (Bill C-31), which includes the most
important changes to the Canadian Trade-marks Act since 1953.
While the amendments are, in part, designed to insure that
Canada moves toward greater conformity with international laws and
regulations, they will also profoundly affect other aspects of the
practice. Here are some of the key changes.
Expanded Definition of Trade-marks
The definition of trade-marks now includes "a sign or
combination of signs that is used or proposed to be used by a
person for the purpose of distinguishing or so as to distinguish
their goods or services from those of others".
These "signs" include a letter, a numeral, a colour, a
figurative element, a three-dimensional shape, but also other
non-traditional marks such as a hologram, a moving image, a mode of
packaging goods, a sound, a scent, a taste, a texture and the
positioning of a sign.
Use of the Nice Classification
All goods and services listed in new trade-mark applications, or
in renewal of existing trade-mark registrations, will now need to
be classified in accordance with the Nice Classification. The
introduction of this classification will likely impact trade-mark
filing and maintenance costs in Canada as the Canadian government
will likely follow the practice of other countries and impose
separate filing fees and renewal fees for each class of goods and
services covered in an application or registration.
Removal of the Necessity of Identifying Filing Grounds or
Filing a Declaration of Use
The amendments remove the need for applicants to identify the
filing ground or a specific date of first use of their marks in
Canada (or in any country), or the need to file a subsequent
declaration attesting to the use of their trade-marks in Canada,
prior to registration.
This amendment is creating significant controversy amongst
Canadian practitioners as it is feared this may open the door to
"trade-mark trolls" in Canada which may now be able to
register trade-marks without initially having to show use of this
mark in Canada or elsewhere. While use of a trade-mark in Canada
will remain the guiding principle for the recognition of trade-mark
rights, the new amendments will likely create initial uncertainty
regarding entitlement. This will likely have an impact on
opposition and litigation proceedings.
Other notable amendments include the possibility to divide
trade-mark applications in Canada, the reduction of the term of
protection of a registration from 15 years to 10 years, and other
provisions regarding corrections of errors, and the streamlining of
formalities, including application requirements, registration of
assignments, and others.
While Bill C-31 has now been passed into law, some of the
amendments to the Trade-marks Act will take some time before they
come into force. In the coming months, the Canadian Intellectual
Property Office will engage in consultations on changes to the
Trade-marks regulations, and will likely issue practice notices
implementing requirements under the Madrid Protocol and Nice
Agreement. We will closely follow these consultations.
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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