Proposed Changes to Canada’s Trade-marks Act

Not to be upstaged by China, who recently proposed changes to its Trademark Law, the Government of Canada proposed substantial changes to its Trade-marks Act on March 28, 2014. Several of these changes were proposed to align Canada’s trademark system with those of other countries, and to allow Canada to accede to certain international treaties with trademark provisions, such as the Madrid Protocol. These proposed changes include, among others:

• Elimination of the Use Requirement – Under this change, an application can be filed and a registration obtained as long as the applicant is (1) using or proposes to use a mark in Canada and (2) entitled to use a mark. No date of first use in Canada will be required, and the applicant will never have to actually use the mark in Canada to secure the registration.
• Adoption of the Nice Classification System (NCS) – it is not clear yet whether application filing fees will be assessed on a per class basis;
• Reduction of term from 15 to 10 years;
• The ability to divide an application so that goods/services not subject to a refusal or objection will not delay registration of the remaining goods/services in the application;
• Registration of certification marks based on proposed use, as well as actual use; and
• Registration of non-traditional marks such as 3D shapes, sounds, scents, tastes, and textures. The proposed legislation prevents the registration of features dictated primarily by utilitarian function, and registration will not prevent a person from using a primarily utilitarian feature embodied by a registered trademark.

With elimination of the use requirement, it is even more important for trademark owners to regularly monitor the Canadian Trade-marks Journal for advertised applications by third-parties (including possible bad actors) seeking to register trademarks identical or confusingly similar to those that are not the subject of a registration or pending application in Canada. Also, trademark owners should reconsider filing to register a trademark that was previously precluded from registration due to the use requirement, particularly those trademarks enjoying recognition where they are used, but for which there is no market for the associated product or service in Canada.

Trademark owners may also want to apply now for marks associated with goods and services classified in multiple classes, to avoid a per class filing fee that the Canadian government might impose in the future.

It is expected that these proposed changes will be passed into law rather quickly.

This article appeared in the April 2014 issue of MarkIt to Market. To view our past issues, as well as other firm newsletters, please click here.