As we have reported in our
June 20, 2014 IP Update, the Government of Canada has passed
into law Bill C-31, which contains numerous significant amendments
to Canada's Trademarks Act. Among the amendments is
the repeal of section 14 of the Act, which provides
non-Canadian brand owners with a material advantage over Canadian
Currently, section 14 allows a non-Canadian brand owner that
owns a trademark registration outside Canada to overcome an
objection from the Canadian Trademarks Office that its applied-for
trademark is "clearly descriptive", "deceptively
misdescriptive" or "primarily merely the name or the
surname of an individual" by filing evidence establishing that
the mark "is not without distinctive character" in
Canada, "having regard to all the circumstances of the case
including the length of time during which it has been used in any
However, once the amendments to the Act come into
force, section 14 will be repealed. As a result, both Canadian and
non-Canadian applicants will need to file evidence, under new
section 12(3) of the Act, that the mark has actually
become "distinctive", and not merely that the mark is
"not without distinctive character".
What is the difference? Quite simply, under section 12(2) (which
will become the new section 12(3) once the amendments to the
Act come into force), more persuasive evidence of sales,
promotion and advertising is typically required by the Trademarks
Additionally, once section 14 is repealed, non-Canadian
applicants will no longer be able to rely upon business activities
and evidence of use outside Canada in order to overcome an
Also, unlike section 14 evidence, section 12(2) evidence
typically needs to include sales and advertising information on a
provincial or regional basis in Canada, and not merely
geographically unspecific sales and advertising figures within
Canada. The Trademarks Office, having regard to the evidence
adduced, may restrict the registration to those particular
provinces or regions in Canada in which the trademark is shown to
have become "distinctive", so additional effort will
therefore be required of non-Canadian brand owners.
The date on which the amendments to the Act will come
into force is currently unknown, but will likely not be before
mid-2016. Thus, applicants from outside Canada that are looking to
register in Canada trademarks that may be considered to be clearly
descriptive, deceptively misdescriptive or a person's name
should file their applications now in order to take advantage of
section 14 while it remains in force. The Trademarks Office has
indicated that any applications relying on section 14 that have not
yet been allowed as of the date on which the amendments come into
force will be required to forfeit their reliance on section 14 (and
on foreign registration and use generally), and, if no other filing
bases remain, be abandoned.
The preceding is intended as a timely update on Canadian
intellectual property and technology law. The content is
informational only and does not constitute legal or professional
advice. To obtain such advice, please communicate with our offices
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