The Government of Canada, as part of Bill C-31 (
Economic Action Plan 2014 Act, No. 1 – Division 25), has
put forward legislation that will make major changes to the
Trade-Marks Act, R.S.C. 1985, c. T-13. Once Bill C-31 has
been proclaimed into force, the way that businesses create and
protect their trade-marks in Canada will be changed
Some of these changes are long awaited. Steps have been taken to
allow implementation in Canada of the Madrid Protocol, the Nice
Agreement and the Singapore Treaty on the Law of Trademarks.
Generally speaking, these international agreements are intended to
improve the efficiency of international registration of
trade-marks. One of the results of these changes is that
registration of trade-marks in Canada will now only last 10 years
before requiring renewal of the registration, not 15 years (as
Other changes from Bill C-31 have raised significant concerns
among trade-mark users. The most controversial is the removal of
the requirement to show "use" of a trade-mark prior to
registration. Use of a trade-mark has been a central feature of the
law of trade-marks in Canada for over 100 years. The removal of
this requirement represents a significant change in the way the
system will be used. This change brings us closer to the European
systems, leaving the United States as one of the last major systems
that requires the applicant to show use before registration of the
Businesses should to be concerned about this change. One
potential consequence is that this change may result in more
trade-mark applications being filed with questionable merit, giving
to more costly opposition proceedings at the Canadian Intellectual
Property Office. Trade-mark owners will bear the burden of the
costs in policing these new applications. These owners will be
required to bring opposition or expungement proceedings to protect
their existing trade-marks.
The removal of this requirement, without prior consultation or
discussion, has led to a number of groups voicing concerns. These
groups include the Canadian Bar Association (link)
and the Winnipeg Chamber of Commerce (
link). The common suggestion is that the change to the use
requirement in the Trade-marks Act is not required to
bring Canada into compliance with its treaty obligations. The
better route, it is suggested, would be for this change to be
removed from Bill C-31, and submitted for review and consultation
as a stand-alone Bill.
These are not the only changes on the way for this area of the
law. Bill C-8 (
Combating Counterfeit Products Act), is currently at Third
Reading, and is intended to provide business owners and border
security with further tools to protect their trade-marks and
copyright in Canada.
Whether the Government of Canada intends to change course on
these amendments remains to be seen. These changes make it more
important than ever to discuss your trade-mark questions with a
qualified Registered Trade-mark Agent, to ensure that the
reputation of your business, which arises from your trade-mark,
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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