Royal Assent to Changes in the Canadian Trademarks Act has Significant Implications for Brand Owners

June 23, 2014 | Catherine M. Dennis Brooks

Bill C-31, which will, among other things, implement significant changes to the Canadian trademarks regime, received Royal Assent on June 19, 2014. The date on which the Bill, Economic Action Plan 2014 Act, No. 1, will be proclaimed in force has not yet been announced, but it is likely that some of the amendments will come into force this year, with full implementation of the Bill occurring in 2015 following the drafting of regulations.

The Canadian Intellectual Property Office (“CIPO”) issued a statement indicating that the “amendments to the Trademarks Act  … will allow Canada to accede to three trademark treaties: Madrid Protocol, Singapore Treaty and Nice Agreement” and that the amendments will “modernize Canada’s intellectual property regime”. CIPO has indicated that over the coming months it will publicly consult on the proposed changes to the Regulations to the Trademarks Act, and will work toward updating its IT systems to accommodate the changes.

As reported in one of our previous IP Alerts, concerns have been expressed about the impact of some of the proposed changes, particularly the elimination of the “use” requirement to obtain a trademark registration in Canada. Unlike the United States, which has acceded to the three international treaties referred to above and still maintained its use-based registration system, Canada’s trademark regime will no longer be use-based.

For the Canadian system this is a significant change.  Under the use-based system a trademark can be registered only if the applicant has used it in Canada or if the applicant has both used and registered it in another jurisdiction. The removal of the requirement that there be use of a mark in order to register it has been the most controversial aspect of the amendments. Brand owners with international trademark portfolios will now likely amend their international trademark protection strategy to file applications in Canada sooner rather than later in order to avoid potentially having to negotiate or litigate to regain rights in their brands in Canada in the event they are registered by other parties possibly in order to hinder the brand owners market entrance, or by trademark trolls who register trademarks that they have no intention of using.

Brand owners with marks in use in other jurisdictions and contemplating entrance into Canada should certainly consider filing a trademark application now to prevent others from obtaining registration when the Bill comes into force and the use requirement is eliminated.

Canadian companies, trade organizations, and intellectual property professionals have expressed concern about the changes and the additional cost that is likely to be incurred by trademark owners in relation to trademark clearance, assessment of potential opposition proceedings, and enforcement.
 
We will report further with a detailed analysis of the changes and the timing of the coming into force of the amendments to the Canadian Trademarks Act.

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