As reported in our
June 20, 2014 IP Update, the Government of Canada passed into
law Bill C-31, which contains numerous significant amendments to
Canada's Trade-marks Act. Some of the amendments were
discussed in our
March 31, 2014 IP Update. Among the significant changes to
Canadian trademark law will be the elimination of the requirement
for declaring use in Canada prior to obtaining a registration.
However, recent news from the Canadian Trademarks Office regarding
a delay in the implementation of this provision warrants
consideration of the optimal strategy to be adopted in connection
with the requirement to declare use in the interim period.
Under the current regime, when a trademark application is based
upon "proposed use" of the mark (or
"intent-to-use" the mark) in Canada, on allowance of the
application the applicant must file a Declaration stating that use
of the trademark has commenced in Canada in association with goods
and/or services for which there was no use in this country at time
of filing. An exception to this rule, typically available
only to applicants outside of Canada, is when the same goods and/or
services are covered by a home registration and use abroad
In cases where a Declaration of Use is required, the initial
deadline is normally three years from the filing date. This
deadline can, under current practice, be extended for an additional
three years in six-month increments. Beyond that point, extensions
of time are granted only in exceptional circumstances. Thus, to
avoid the abandonment of an application, a proposed use applicant
effectively has a fixed period of time of six years from the filing
of the application, within which to commence use of the mark in
Canada with all the goods and/or services covered by its
application or alternatively, at least some of the goods and/or
services, but with the result that the ensuing registration would
be restricted accordingly.
The elimination of the need to file a Declaration of Use, once
implemented, will apply not only to applications filed after the
change in the law, but also to all pending applications.
Accordingly, since the implementation was previously anticipated
for 2017, an applicant having yet commenced use of its mark, but
with a window of time to file a Declaration of Use extending to
2017, could strategically request consecutive extensions of time
until the new law comes into force. However, based on comments
recently made by the Trademarks Office, it now appears that the
amendments to the Trade-marks Act will not come into force
until at least the beginning of 2018.
In view of this delay, applicants with a window of time to file
a Declaration of Use that does not extend past 2017 and, who had
been relying upon early implementation of the new law, may need to
consider moving forward with use of the mark in Canada in order to
file a Declaration more quickly than previously had been
anticipated or consider filing a new application if the current
deadline cannot be met.
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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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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