A month has now passed since the coming into force of the most significant revisions to Canada's Trademarks Act in decades. Changes including the removal of use as a prerequisite to registration and the accession of Canada to the Madrid Protocol have made it easier to file and register trademarks in Canada, particularly for foreign applicants.
While these changes bring Canada closer in line with international standards, they raise the spectre of negative consequences for Canadian businesses and trademark owners. While exact numbers are not yet available, all indications are that a record number of new trademark applications were filed in the weeks leading up to and following the changes to the Trademarks Act. A number of the new applications were "all-class" applications filed by known trademark trolls. It is anticipated that the large number of incoming filings will significantly crowd the Canadian Trademarks Register with potentially conflicting marks.
Brand owners should consider various strategies, including:
- Conducting early trademark searching to identify problematical marks
- Establishing watch services to monitor the Trademarks Register for applications to register potentially confusing marks
- Flagging competing applications of interest for potential opposition or expungement proceedings
- Prioritizing the filing of new applications to register trademarks of interest on existing or future areas of business
More significant changes are expected to come into force in the near future.