As we have reported in our June 20, 2014 IP Update, the Government of Canada has passed into law Bill C-31, which contains numerous significant amendments to Canada’s Trademarks Act. Among the amendments is the repeal of section 14 of the Act, which provides non-Canadian brand owners with a material advantage over Canadian brand owners.
Currently, section 14 allows a non-Canadian brand owner that owns a trademark registration outside Canada to overcome an objection from the Canadian Trademarks Office that its applied-for trademark is “clearly descriptive”, “deceptively misdescriptive” or “primarily merely the name or the surname of an individual” by filing evidence establishing that the mark “is not without distinctive character” in Canada, “having regard to all the circumstances of the case including the length of time during which it has been used in any country”.
However, once the amendments to the Act come into force, section 14 will be repealed. As a result, both Canadian and non-Canadian applicants will need to file evidence, under new section 12(3) of the Act, that the mark has actually become “distinctive”, and not merely that the mark is “not without distinctive character”.
What is the difference? Quite simply, under section 12(2) (which will become the new section 12(3) once the amendments to the Act come into force), more persuasive evidence of sales, promotion and advertising is typically required by the Trademarks Office.
Additionally, once section 14 is repealed, non-Canadian applicants will no longer be able to rely upon business activities and evidence of use outside Canada in order to overcome an Examiner’s objection.
Also, unlike section 14 evidence, section 12(2) evidence typically needs to include sales and advertising information on a provincial or regional basis in Canada, and not merely geographically unspecific sales and advertising figures within Canada. The Trademarks Office, having regard to the evidence adduced, may restrict the registration to those particular provinces or regions in Canada in which the trademark is shown to have become “distinctive”, so additional effort will therefore be required of non-Canadian brand owners.
The date on which the amendments to the Act will come into force is currently unknown, but will likely not be before mid-2016. Thus, applicants from outside Canada that are looking to register in Canada trademarks that may be considered to be clearly descriptive, deceptively misdescriptive or a person’s name should file their applications now in order to take advantage of section 14 while it remains in force. The Trademarks Office has indicated that any applications relying on section 14 that have not yet been allowed as of the date on which the amendments come into force will be required to forfeit their reliance on section 14 (and on foreign registration and use generally), and, if no other filing bases remain, be abandoned.