The Federal government of Canada recently proposed major new changes to the Trade-marks Act—including changing the name of the Act to the Trademarks Act. The amendments, if passed, will be the biggest changes to the Act since 1953.
The amendments were quietly included in an omnibus budget implementation act dubbed the "Economic Action Plan 2014". This means that the amendments will likely sail through Parliament with little debate or public consultation.
Among the major changes are the elimination of the "use" requirement for trade-mark applications and the adoption of the Nice Classification system. In addition, there are also various changes to terminology, the government registrar will be granted increased powers to correct administrative errors, and the term of trademark registration has been reduced to 10 years (down from 15).
The amendments will eliminate the distinctly Canadian hyphen in the word "trade-mark". The word will now be spelled "trademark", which will surely please our neighbours to the south. Additionally, the archaic term "wares" has been replaced with the slightly less archaic term "goods".
The current Trade-marks Act allows for a peculiar type of pseudo-trade-mark called a "distinguishing guise". An example of a distinguishing guise would be the shape of a Heinz ketchup bottle. The distinguishing guise has now been rolled into the broader definition of a trademark.
The amendments introduce the concept of a trademark being a "sign or combination of signs". Many different types of signs are potentially trademarkable, including colours, smells, holograms, tastes, and moving pictures.
No need to state date of first use in applications
Under the current Trade-marks Act, every trade-mark application must list the date that the applicant started using the trade-mark. Alternatively, an applicant can file a "proposed use" application on the understanding that they will start using the trade-mark within 3 years of applying (or within 6 months of allowance, whichever is later). Applicants can also rely on use of the trade-mark abroad, assuming they have a registration in that other country.
The amendments do away with this requirement to use a trademark in order to have it registered. The government registrar will no longer record the date of first use nor, in the case of proposed use applications, will it require applicants to file declarations of use.
These amendments will make it slightly easier to obtain a trademark registration since applicants will not have to declare that they are using a trademark in order to get a registration. Accordingly, there will likely be more trademarks getting registered, many of which are not actually being used by their owners.
This amendment may not actually mean very much practically speaking. Under the current system, dates of first use and declarations of use are not verified by the registrar. The declarations are, essentially, a formality.
It should be noted that, as in the current Act, trademarks that have not been used in the past 3 years can be expunged from the registry for non-use. Any third party can request that a trademark be expunged for non-use. This right will remain, meaning that registrants must continuously use their trademarks or risk losing them. Similarly, the person entitled to register a trade-mark will still generally be the first user (not the first person to file).
In terms of rights and remedies, the amendments will effectively remove the right to challenge an applied-for or newly registered trademark on the basis that the applicant claimed a mark was in use when in fact it was not. Instead, parties will need to wait a full 3 years after the date of registration file a section 45 notice to have the mark deleted for non-use.
Trademark laws in most countries make use of what is referred to as the Nice Classification system for goods and services, named after the French city of Nice. Every specific type of goods or services fits into a specific pre-defined class, such as "carpets rugs and matting (class 27)" or "telecommunications services (class 38)".
The Nice Classification system can help for determining if two trademarks are confusingly similar. If the two trademarks are similar in appearance, and the goods and services they are registered with belong to the same Nice Classification class, then that is a strong indication that the trademarks are confusingly similar.
The amendments to the Trade-marks Act introduce the Nice Classification system to Canada—sort of. Applicants will now be required to group all of the associated goods and services into Nice Classification classes. However, the amended Act states that the Nice classes should not be used to determine whether two trademarks are confusing. Accordingly, the classes will not have any practical use or meaning within Canada and will add an extra step to the application process.
The Nice Classification system is presumably being introduced so that Canada can join the Madrid system for the international registration of marks. The Madrid system is a system for filing trademark applications in multiple countries at once, while having the applications centrally administered through the World Intellectual Property Office. Having the standardized class system in place makes it easier to compare trademarks from different countries, and is a legal requirement for countries to participate in the Madrid system.
Interestingly, the amendments grant the registrar the power to force existing trademark owners to classify their trademarks according to the Nice system. In other words, trademark owners who registered before the amendments pass may be forced to revise their trademarks or else will have them deleted from the registry.
The amendments include a number of other miscellaneous changes. The mostly redundant concept of a "representative for service" has been deleted, and the role of trade-mark agents has been expanded. Government trademark examiners have been given broader powers to correct administrative errors. A new defence to infringement has been added where an infringer may argue that a trademark is "utilitarian" in nature and therefore should not be enforceable. Applicants will have the new ability to split applications in two (called "divisional applications") in situations where their application is opposed in part. Finally, trademarks must be renewed every 10 years under the amendments, a reduction from the current 15 year term.
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