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 significantly.
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 presently allowed).
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 trade-mark.
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, remains protected.
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