The federal government's recent omnibus budget bill, Bill C-86 tabled October 29th, 2018, proposes significant changes to Canada's IP laws. Division 7 of the Bill is intended to implement many aspects of the government's IP strategy announced in April 2018, and targets the Patent Act, the Trade-marks Act, and Copyright Act; provides for a new College of Patent Agents and Trade-mark Agents Act; and effects changes to diverse legislative schemes impacting the IP regime, including privacy and bankruptcy.

Impact on Canadian trademarks regime

Notably, Bill C-86 proposes several changes to Canada's trademark regime which will impact brand owners' strategies in respect of oppositions, expungement proceedings, and enforcement. Some of the significant changes include:

Increased Procedural Powers for Oppositions and s. 45 Proceedings. Adjustments to the rules governing oppositions under section 38, expungement proceedings under section 45, and statements of objection concerning geographic indications under section 11.13, including:

  • granting the Registrar the power to award costs;
  • granting the Registrar the power to issue confidentiality orders in respect of evidence filed;
  • permitting particular orders, such as confidentiality and costs orders, to be filed with and enforced as orders of the Federal Court; and
  • permitting the creation of regulations to provide for case management of proceedings.

Limit on Ability to File New Evidence on Appeal. Parties will be required to seek leave in order to adduce new evidence on appeal from a Registrar's decision.

Introduction of Bad Faith. Parties will be able to assert bad faith as a ground of invalidity and as a ground of opposition.

Limit on Official Marks. The Registrar will be empowered to remove official marks from the Register if they are owned by entities that no longer exist or are no longer public authorities.

Limits on Enforcement Without Use. A registered trademark owner will have to have used a trademark in Canada (or have special circumstances justifying the absence of use) in order to be entitled to seek relief during the first three years of registration for infringement or depreciation of goodwill.

Introduction of a College of Patent Agents and Trade-mark Agents. A new professional regulatory body will be created and empowered to govern licensing of and professional standards for patent and trademark agents.

Status of the legislation

The Introduction and First Reading of Bill C-86 in the House of Commons was completed on October 29, 2018. We will be carefully tracking this bill as it moves through Parliament. Further updates to come.

The author wishes to thank Anna Wilkinson and Chris Guerreiro for their help in preparing this legal update.

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