Significant Changes to Canada’s Trademark Laws on the Horizon

On June 19, 2014, Bill C-31, which amends the Trade-marks Act among other things, received royal assent. The upcoming amendments are numerous and will lead to significant changes in Canadian trademark law.

The Bill C-31 amendments are intended to make the registration process under the Act consistent with international treaties (the Singapore Treaty,¹ the Nice Agreement² and the Madrid Protocol³ ). However, substantive changes beyond those required by these international treaties are contemplated by the legislation. The amendments are not expected to go into effect until 2015 because the government is drafting regulations to assist with the implementation of the legislation. Bill C-31 was tabled without much notice to or consultation with the profession, and it passed with some controversy. It remains to be seen how the new regulations will affect the practical implications of Bill C-31.

The amendments make many changes to the Trade-marks Act, but some highlights include the following:

• Elimination of use requirements – Currently, Canadian law requires that a trademark be used somewhere in the world before it can proceed to registration in Canada. The current legislation will no longer require an applicant to declare use, which may lead to an increased number of “paper registrations,” making it more costly and complex to clear marks for use in Canada, and more difficult to assess entitlement between parties. Prior use of a trademark will still govern entitlement, but it may be more difficult to assess, and brand owners will potentially need to be more vigilant in opposing trademark applications. The new regime may make Canadian trademark law more akin to European practice.
• New classification requirement for goods and services – Descriptions of goods and services in a trademark application will need to be classified according to the Nice Classification under the Nice Agreement, in addition to the existing requirement to be described in “ordinary commercial terms”. This requirement will bring Canada in line with most other industrialized countries.
• Elimination of “associated marks” – Currently, Canadian law prohibits the transfer of marks that have been “associated” on the Register unless all of the marks are transferred together. The current legislation removes this restriction.
• Reduction of term – The registration term for a trademark will be reduced to 10 years, from 15 years.
• Divisional applications permitted – Divisional applications will be permitted, so an applicant can split an application by goods or services after the application is filed. This procedure will allow, for example, the non-problematic portions of an application to proceed to registration more efficiently.
• Non-traditional trademarks permitted – Non-traditional trademarks, such as a three-dimensional shape, a hologram, a moving image, a sound, a scent, a taste, and a texture will be registrable, provided that there is evidence of distinctiveness as of the filing date. Such evidence will no longer necessarily need to be furnished by affidavit or statutory declaration. Trademark applications will be specifically examined to ensure that they are distinctive.

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¹ Singapore Treaty on the Law of Trademarks.

² Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (1957).

³ Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.