Earlier this year, the Canadian government introduced the most significant changes in 50 years to the Trade-marks Act by way of an Omnibus Budget Implementation Bill (Bill C-31, Economic Action Plan 2014 Act, No. 1). While many of these changes are purely technical, several will have direct bearing on how you must manage your trademarks or how your competitors may challenge your use of certain distinctive elements of your firm’s image.
As part of this reform of the trademark regime, the first steps were taken towards ratification and implementation of international intellectual property law treaties in an effort to bring Canadian practice in line with most other countries in the world:
- Madrid Protocol, which allows trademark owners to register their marks in one or more of the Protocol’s 90 contracting countries simply by filing a single international application, in one language and paying one fee;
- Singapore Treaty on the Law of Trade- marks, which standardizes administrative procedures between countries;
- Nice Agreement, which provides an international classification of goods and services for the registration of trademarks. Bill C-31 received royal assent on June 19th, 2014. Most of the amendments are expected to come into force in the fall of 2014, but regulations relating to the Madrid Protocol will likely be delayed until 2015.
Amendments to the Trade- marks Act
Outlined below are some of the major changes:
Extended definition of trademark
A trademark is now defined as “a sign or combination of signs that is used or proposed to be used by a person for the purpose of distinguishing or so as to distinguish their goods or services from those of others […]”
These signs include “a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three- dimensional shape”, as well as non-traditional marks such as “a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign”.
Term of registration
The term of protection of a registration is being reduced from 15 years to 10 years.
Grounds for filing applications
The filing of applications will be simplified as applicants for registration will no longer be required to state a basis for registration such as proposed use, a date of first use of the mark in Canada or foreign use and registration.
A declaration of use of a mark in Canada will no longer be required in order to secure a certificate of registration.
Use of Nice classification
All goods and services included in new trademark applications will have to be listed accordingly to the Nice classification system, which is composed of 34 classes of goods and 11 classes of services. The goods and services listed in existing registrations will likely also have to be so classified at the time of renewal.
The introduction of this classification will likely increase filing fees and maintenance costs as it is expected that the Canadian government will follow the practice of other countries and impose separate filing fees and renewal fees for each class of goods and services included in an application or registration.
Applicants will be able to divide trademark applications in Canada to secure certificates of registrations for some of the goods and/or services applied for and continue the application for the remaining goods and services.
Summary expungement – Section 45
The initiation of section 45 proceedings (expungement for failure to use a trademark in Canada) can now be limited to specific goods and services which are of interest to the requesting party.
The following new grounds have been added:
- At the filing date of the application in Canada, the applicant was not using and did not propose to use the mark in Canada in association with the goods and services applied for;
- At the filing date of the application in Canada, the applicant was not entitled to use the mark in Canada.
Counterstatements no longer have to respond to the grounds of opposition and need only state that the applicant intends to respond to the opposition.
Changes in terminology
A “trade-mark” will become a “trademark”, “wares” will become “goods” and “distinguishing guise” will disappear altogether.
Upcoming developments and their impact
While Bill C-31 has now been passed into law, the full effect of the sweeping amendments to the Trade-marks Act will only become fully known when the Canadian Intellectual Property Office implements amendments to the existing Trade-marks Regulations. In the coming months, consultations will take place as to the changes which will be made to the regulations. This will likely result in the issue of practice notices outlining requirements under the Madrid Protocol and Nice Agreement.
Some of the upcoming changes, such as those on international registrations, could be advantageous to trademark owners. However, the general management of trademark portfolios may become more delicate. If you are the owner of a trademark, or if your business uses any distinctive element that could be a trademark, you should discuss the situation with your legal advisor. Trademarks can be one of your most valuable business assets: you should not neglect their protection.