On June 19, 2014, Bill C-31, which amends the Trade-marks
Act among other things, received royal assent. The upcoming
amendments are numerous and will lead to significant changes in
Canadian trademark law.
The Bill C-31 amendments are intended to make the registration
process under the Act consistent with international treaties (the
Singapore Treaty,1 the Nice Agreement2 and
the Madrid Protocol3 ). However, substantive changes
beyond those required by these international treaties are
contemplated by the legislation. The amendments are not expected to
go into effect until 2015 because the government is drafting
regulations to assist with the implementation of the legislation.
Bill C-31 was tabled without much notice to or consultation with
the profession, and it passed with some controversy. It remains to
be seen how the new regulations will affect the practical
implications of Bill C-31.
The amendments make many changes to the Trade-marks
Act, but some highlights include the following:
Elimination of use requirements –
Currently, Canadian law requires that a trademark be used somewhere
in the world before it can proceed to registration in Canada. The
current legislation will no longer require an applicant to declare
use, which may lead to an increased number of "paper
registrations," making it more costly and complex to clear
marks for use in Canada, and more difficult to assess entitlement
between parties. Prior use of a trademark will still govern
entitlement, but it may be more difficult to assess, and brand
owners will potentially need to be more vigilant in opposing
trademark applications. The new regime may make Canadian trademark
law more akin to European practice.
New classification requirement for goods and
services – Descriptions of goods and services in a
trademark application will need to be classified according to the
Nice Classification under the Nice Agreement, in addition to the
existing requirement to be described in "ordinary commercial
terms". This requirement will bring Canada in line with most
other industrialized countries.
Elimination of "associated marks"
– Currently, Canadian law prohibits the transfer of marks
that have been "associated" on the Register unless all of
the marks are transferred together. The current legislation removes
Reduction of term – The registration
term for a trademark will be reduced to 10 years, from 15 years.
Divisional applications permitted –
Divisional applications will be permitted, so an applicant can
split an application by goods or services after the application is
filed. This procedure will allow, for example, the non-problematic
portions of an application to proceed to registration more
Non-traditional trademarks permitted –
Non-traditional trademarks, such as a three-dimensional shape, a
hologram, a moving image, a sound, a scent, a taste, and a texture
will be registrable, provided that there is evidence of
distinctiveness as of the filing date. Such evidence will no longer
necessarily need to be furnished by affidavit or statutory
declaration. Trademark applications will be specifically examined
to ensure that they are distinctive.
1 Singapore Treaty on the Law of Trademarks.
2 Nice Agreement Concerning the International
Classification of Goods and Services for the Purposes of the
Registration of Marks (1957).
3 Protocol Relating to the Madrid Agreement Concerning
the International Registration of Marks.
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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