Significant changes are coming to Canada's trademark system.
Amendments to the Federal Act that governs trademarks in Canada,
including the registry system, are expected to come into effect in
late 2015 or early 2016. Many of the changes will be positive, but
the changes also a pose threat to Canadian trademark owners.
Among other things, the amendments will enable Canada to accede
to some international trademark treaties, including the Madrid
Protocol and the Nice Agreement ("Nice" being the city in
Currently, a Canadian business wishing to obtain trademark
protection outside Canada, must file a separate trademark
application for each country of interest, which is costly and time
consuming. Once the Madrid Protocol has been implemented, a
Canadian business that has a registration or pending application in
Canada, will be able to obtain an "international
registration" that may be extended, at any time, to any of the
more than 90 Madrid Protocol countries. US businesses have enjoyed
this privilege for over a decade.
However, the Madrid Protocol will also work in reverse; it will
make it easier for a foreign trademark owner to obtain a Canadian
trademark registration, which may adversely affect Canadian
businesses. If, a trademark that is the subject of a Madrid
Protocol application is confusing with a previously registered or
applied-for mark, then the registration or application will
automatically be an impediment to the Madrid Protocol application.
However, if the Canadian business has not bothered to apply to
register its mark, then the Canadian business would have to take
positive steps against the Madrid Protocol application or resulting
registration, which may be costly.
The Nice Agreement establishes a classification system for goods
(35 classes) and services (11 classes). Currently, a Canadian
trademark applicant pays only a single Government fee, no matter
how many different types of wares and services are listed in the
application. Although it hasn't been confirmed, it is widely
assumed that once the Nice classification system has been
implemented in Canada, at least some Government trademark fees will
be charged on a per-class basis, as this is how fees are charged in
other jurisdictions that have adopted the Nice classification
system (including the US). Thus, the charges for Canadian trademark
applications covering wares and/or services that fall into multiple
classes, are likely to increase.
Another significant change is the removal of the "use"
requirement. Until now, Canada's trademark registry system been
based on the idea that registration serves primarily to confirm
trademark rights that arise through actual use of a mark in
commerce. Under the current Act, a Canadian trademark applicant
must affirm that there has been use of the mark with the
applied-for wares and/or services, before the mark will proceed to
The removal of the use requirement will benefit Canadian
businesses having a legitimate intention to use their applied-for
marks, but who experience delays in commencing such use. However,
the removal of the use requirement also creates the possibility of
trademark squatting, that is, the registering of marks solely for
the purpose of selling them.
In light of these upcoming changes, it would be prudent for
Canadian trademark owners to give serious consideration to either
establishing, or shoring up, their position on the Trademark
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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