In March 2014 the federal government introduced major amendments to the Trademarks Act – designed to facilitate implementation of the Nice Agreement, the Singapore Treaty and the Madrid Protocol – in Bill C-31. However, Bill C-31 also contains fundamental changes to the current trademark legislation, including the elimination of use as a registration requirement. Bill C-31 received royal assent in June 2014 and the amendments are expected to come into force in 2017.
Bill C-8, the Combating Counterfeit Products Act, was introduced in 2013 to improve legal remedies for counterfeiting and address a longstanding trade issue. It was granted royal assent in December 2014 and new border detention provisions (the request for assistance), additional criminal penalties for counterfeiting and a broadened definition of 'trademark infringement' all came into force on January 1 2015. Additional changes are pending in Bill C-59. If passed, these will ensure that trademark agents have privilege for communications relating to trademark protection and give administrative authorities clear power to allow time extensions for various force majeure closures. International treaties
Canada is a signatory to the Paris Convention for the Protection of Intellectual Property, which provides for the right of priority on the basis of an application filed in a contracting state and lays down rules that all contracting states must follow.
Legislation to implement Canada's obligations under the World Trade Organisation Agreement on Trade-Related Aspects of Intellectual Property Rights came into force on January 1 1996. Among other things, this introduced a comprehensive set of procedures for the protection of geographical indications for wines and spirits.
Canada offers protection to both registered and unregistered trademarks and trade names, including logos, shapes and some non-traditional trademarks. The owner of an unregistered trademark or trade name may not only assert its rights over others (by way of a passing-off action), but also rely on those rights to prevent registrations of confusingly similar trademarks.
Any person – including trade unions, businesses and government administrative authorities, and their agents – may apply for trademark registration. Section 30 of the Trademarks Act establishes that goods and services must be described in "ordinary commercial terms". In addition, applicants must identify at least one specific filing ground. Currently, use of the mark must commence before a registration will issue; applicants that file based on proposed use must submit a declaration attesting to use of the mark with the goods or services in the application, before registration.
Under Bill C-31, use will no longer be a prerequisite to registration. Any applicant that has used or intends to use its mark in Canada and is entitled to register it may apply for registration. If unopposed, the application will issue to registration once the opposition period expires.
Scope of protection
The Trademarks Act prohibits the registration of marks that cannot function as a trademark, unless the applicant can show that the mark has acquired distinctiveness as of the application filing date. These include:
- marks that are primarily or merely names or surnames;
- words that are clearly descriptive or misleadingly descriptive of the goods or services, their origin or the persons that created them; and
- three-dimensional (3D) shapes.
If such a mark has already been registered in the applicant's country of origin and can have distinctive character in Canada, considering the manner in which it has been used and advertised, it may be registrable.
However, this exception will not exist once Bill C-31 comes into force.
Marks that are primarily functional are also not registrable. This will be clarified when Bills C-8 and C-31 are implemented, as both prohibit the registration of signs with a primary utilitarian function.
Once Bill C-31 enters into force, it will be possible to register a broader range of signs, including tastes, textures and smells. However, examiners will also be given the power to object to such applications for lack of distinctiveness and it is anticipated that it will become more difficult for such marks, and others with a low degree of inherent distinctiveness, to be approved without evidence of acquired distinctiveness in Canada.
Canada has no statutory definition of a 'famous mark'. Fame or reputation may affect enforcement or opposition results, since the test for confusion includes analysing the extent to which a mark is known. However, the Canadian courts have said that fame is not a trump card. In 2006 the Supreme Court's decisions in Mattel Inc v 3894207 Canada Inc (2006 SCC 22) and Veuve Clicquot Ponsardin v Boutiques Cliquot (2006 SCC 23) clarified previous case law on the scope of protection to be afforded famous marks. Following these, the courts have been reluctant to expand the scope of protection to goods or services that are significantly different from those for which the marks are known or registered.
Section 9 of the Trademarks Act grants special protection to certain types of mark, including 'official marks' – trademarks that have been adopted and used by public authorities under significant government control in Canada – and prohibits the adoption by anyone in connection with a business, as a trademark or otherwise, of any name consisting of or nearly resembling an official mark.
Searching before use and filing is advisable and should include searches of the register, as well as common law rights. While the Canadian Intellectual Property Office (CIPO) does not provide searches, the Trademarks Register is searchable online at www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr03082.html.
Once the changes set out in Bill C-31 are implemented and use information no longer appears on the register, marketplace and other searches to determine the scope and duration of actual use will become very important for potential applicants.
The registration process begins with an application being filed (online or a hard copy) with CIPO. Currently, applicants must identify at least one filing ground and must set out the goods or services in ordinary commercial terms. Once Bill C-31 is implemented, applicants will no longer need to identify any filing grounds, but will have to classify the goods and services according to the Nice Classification. After filing, the application is examined on both absolute and relative grounds. The Trademarks Office will cite as confusing only registered trademarks or previously filed applications. Under the amended act, examiners will also be entitled to object on distinctiveness grounds. Applicants have the opportunity to respond to such objections and, if appropriate, to amend the application or submit evidence in support. If all objections are overcome, the application is approved for opposition. The time from filing to approval generally takes at least eight to 12 months, unless substantive objections are raised. CIPO adheres to strict timelines within which to respond to examiners' reports and limits extensions, unless exceptional circumstances exist.
Once the examiner is satisfied that all requirements have been met and objections overcome, a notice of approval is issued and the application is advertised for opposition in the Trademarks Journal. The application may be opposed by any party within two months. There are currently four grounds of opposition in Canada:
- non-compliance with Section 30 of the Trademarks Act (pertaining to technical deficiencies in the application);
- non-registrability under Section 12(1);
- non-entitlement, referring to prior use or to a confusingly similar trademark (registered or unregistered), trade name, or previously filed trademark application; and
- non-distinctiveness. Challenges based on non-distinctiveness and confusion are often related, since if the applicant's mark is found to be confusingly similar to the opponent's, it cannot be distinctive. If the registrar finds that the statement of opposition fails to raise at least one valid ground, the opposition will be rejected. Otherwise, the registrar forwards a copy of the statement to the applicant, which must file a counterstatement or have the application deemed abandoned. Each party may file evidence to support its position, crossexamine, file written arguments and attend an oral hearing.
The Opposition Board's decision may be appealed to the Federal Court, the Federal Court of Appeal and, in limited instances, the Supreme Court. New evidence may be filed on appeal to the Federal Court. Two new grounds of opposition will be added once Bill C-31 comes into force:
- At the filing date, the applicant was not using and did not propose to use the trademark in association with the goods and services identified.
- At the filing date, the applicant was not entitled to use the trademark in Canada in association with the goods and services identified in the application.
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This article first appeared in World Trademark Review Yearbook 2016/2017, a supplement to WTR magazine, published by The IP Media Group. 13.10.15
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