Canada’s Trade-marks Act Goes International, Causes Concerns at Home

July 3rd, 2014 by

and Ivan Merrow, Summer Law Student

The federal government changed Canada’s intellectual property landscape by giving royal assent to Bill C-31 this past June 19, 2014. The bill creates major changes to the Canadian Trade-marks Act, the least of which is likely the removal of the statute’s hyphen to shorten its name to the Trademarks Act (the “Act”).

The Act ratifies three international intellectual property treaties (the Madrid Protocol, the Singapore Treaty, and Nice Agreement) and dramatically changes the way a trademark is registered and protected in Canada. Most of the Act’s provisions are expected to come into force in 2015, following the government’s drafting of suitable regulations.

How has the Trademarks Act changed?

Prior use of a trademark is no longer required for registration. Perhaps the most significant of the changes, the Act will allow applicants to register a trademark without ever having used it. In addition, registered marks can apply to an entire list of goods and services without prior use. This may prove costly for new applicants, as business owners will have to incur greater expense investigating the marketplace for potential trademark use conflicts if prior use information is no longer part of the register.

Expect a landslide of application approvals. Transition provisions in the Act will also allow any applications that are granted pending a declaration of use (at the “allowed” stage) to be registered after a fee payment. Considering the tens of thousands of applications currently at this stage, this could create a flood of trademark registrations in late 2014 or early 2015 that could impact trademark owners and courts for years to come.

Canada will adopt the Nice Classification system. Trademark applicants will soon be required to identify their goods and services with a commercial class number listed in the Nice Classification system. Approximately 84 countries are signatories to the system. It is offered in multiple languages and may reduce the translation expense for applicants who wish to register in multiple countries. This requirement will apply to any application that has been filed (not registered) by the date the Act comes into force.

The renewal period is being shortened from 15 years to 10 years. Currently in Canada trademark registrations need to be renewed every 15 years, but this period will be shortened to 10. Business owners may want to contact trademark lawyers like those at Devry Smith Frank LLP to renew their trademarks to lengthen their renewal period.

The Act also has many technical provisions that relate to the application process. The proposed regulations and fees to implement the changes are undergoing public consultation, so the final product of the Act is yet to be seen.

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