Changes to the Trade-marks Act

On June 19, 2014 the Canadian government ratified a bill which will modernize our current Trade-marks Act, and with it comes sweeping changes to the methods and processes behind trademark registration and enforcement.  While the bill received royal assent, changes are not yet in force until the regulations are finalized, which are anticipated sometime in 2015.

Here is a summary of some of the major changes and what I believe might be their effect:

  • The death of the hyphen: a trade-mark in Canada will finally be called a trademark, as is the case is most other countries
  • Modernization of other terms: For example, we will refer to associated products as “goods” rather than “wares”
  • Renewal periods will be reduced from 15 years to 10 years
    • While this brings Canadian time periods in line with other counties, it also will increase a registrant’s cost over the lifetime of the trademark
  • Canada will adopt the Nice Agreement which means trademarks will be classified according to certain codes
    • This may result in a per-class filing fee as is common in other countries
    • It is possible that renewals may also be per-class, further increasing costs
  • An applicant will no longer have to submit a declaration of use (or date of first use) of a trademark prior to registration
    • It will be easier (and faster) to obtain a trademark registration
    • A search of the register will yield uncertain results when analyzing whether a particular trademark registration is in use or not.  This will be unfortunate when advising clients of pending registrations, as one may not be certain who has the rights associated with first use, and further (and potentially expensive) market investigations may be necessary to determine this with certainty.  We may also see an increase in opposition proceedings filed as a precautionary measure in order to block pending applications until disclosure of first use is provided and investigated.
    • We may see an increase of trademark “trolls” or “squatters” filing for applications with no proof of use, solely to hinder and sell existing registrations to bona fides applicants
  • The Trademarks Examiner may object to applications on the basis of “lacking distinctiveness”
    • This new ground of objection is yet unexplored but may lead to objections based upon internationally famous marks
  • A new type of divisional application will be permitted
    • This will allow applications which are being opposed in part to continue to registration for those portions of the application which are not being opposed (by dividing the application into two portions)
  • Canada will adopt the Madrid Protocol, allowing the filing of international trademark applications from within Canada
    • This will undoubtedly result in cost savings for applicants as multiple international applications can be filed using a single Canadian agent

Overall, the changes are welcome and will serve to bring the Canadian registration process and laws in line with many other countries.  What is clear is that the costs for applicants may increase, due to shortened lifespans, the possibility of a per-class registration cost, and the potential of true owners of unregistered brands having to expend resources and money to cancel or defend against trademark squatters.  Applicants concerned with these changes should act soon.

For more information, contact me.

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