The Canadian government’s budget implementation bill, Bill C-31 titled Economic Action Plan 2014 Act, No. 1, contains sweeping amendments to numerous statutes including the Canadian Trade-marks Act. The latest proposed amendments underscore the need for brand owners to retain sophisticated Canadian trademark counsel experienced in international trademark law and practice.
Bill C-31 was tabled on March 28th, 2014, and comes fast on the heels of Bill C-8 titled the Combating Counterfeit Products Act which is well on its way to becoming law. Bill C-8 introduced key changes to Canadian trademark law, including an expanded definition of trademark to include matter that previously was not protectable as a trademark such as colour alone, holograms, moving images, scents, tastes and textures, and provisions permitting trademark applications to be divided, allowing applicants the opportunity to strategically complete the registration process for some goods and services in advance of others.
The amendments to the Trade-marks Act in Bill C-31 are intended to harmonize the trademark filing and registration process in Canada with standardized procedures found in two international trademark treaties (the Singapore Treaty and the Nice Agreement), and to prepare for the implementation of a third treaty that will give Canadian brand owners access to an international trademark registration scheme (the Madrid Protocol).
As part of these amendments, Canada will adopt the international spelling of “trademark” as one word, a small but welcomed change.
The amendments simplify the information that must be provided when filing a trademark application, including doing away with the need to specify whether the application is based on use or proposed use of the trademark in Canada, or use and registration of the trademark abroad. The amendments also eliminate the need to file a declaration of use before registration, currently required if an application is based on proposed use in Canada. While these amendments may introduce some additional uncertainty when clearing trademarks for use and registration in Canada, these and other changes will level the playing field for Canadian trademark applicants in Canada.Importantly, Bill C-31 preserves the right to oppose an application and attack a registration based on prior use of a confusingly similar trademark, and to summarily cancel a registration if the trademark has not been used for three consecutive years, leaving the use-based foundation of Canada’s trademark system largely intact.
The amendments also introduce some new requirements. For example, while goods and services will still need to be defined in applications in “ordinary commercial terms” (interpreted to require a higher degree of specificity than in other countries), goods and services also must be grouped and classified according to the international Nice Classification scheme established by the Nice Agreement, with the Registrar having final say. Notably, the Registrar will have the discretion to require owners of existing trademark registrations to comply with this requirement as well. The Bill also reduces the term of a trademark registration, requiring a registration to be renewed every 10 years instead of every 15 years. These new requirements may result in higher government fees and legal costs.
Ultimately, the modernization and harmonization of Canadian trademark law, and the opportunity to access the international registration scheme under the Madrid Protocol, streamline the trademark registration process for Canadian brand owners. However, the amendments in Bill C-31 also introduce some uncertainty and potential risks, which must be considered as part of a strategic approach to trademark clearance and registration in Canada and abroad.