Bill C-31 Proposes Major Changes to Canada's Trade-marks Act

by Bennett Jones LLP
Contact

The Federal Government recently introduced Bill C-31, the Economic Action Plan Act 2014, No.1. Bill C-31 is an omnibus bill which makes changes to nearly 40 different pieces of legislation. Among these amendments are changes to the Trade-marks Act that will have a significant impact on trademark owners.

Background

The stated intention behind the amendments to the Trade-marks Act in Bill C-31 is to ensure that Canada meets its international trademark obligations outlined in three treaties: the Singapore Treaty on the Law of Trade-marks, the Nice Agreement, and the Madrid Protocol (which were tabled by the Federal Government in January 2014). These international treaties stipulate trademark registration requirements for all member states and allow Canadians access to an international trademark registration scheme. The changes to the Trade-marks Act are extensive and exceed the scope of these international treaties.

The three changes to the Trade-marks Act which will have the greatest impact on trademark owners are:

Changes to Use Requirements

Canada is presently a use-based jurisdiction, such that a trademark registration can only be acquired if the applicant states that it has used the mark in Canada, or has both used and registered the mark abroad. The amendments to the Trade-marks Act fundamentally alter this use requirement.

Bill C-31 provides that applicants will no longer be required to state that the mark has been, or is intended to be, used in Canada when the application is filed. Further, there will no longer be a requirement to file a declaration that the mark has been used in Canada as a condition precedent to registration. If the amendments proposed in Bill C-31 are implemented, an applicant will be entitled to a Canadian trademark registration without ever stating that it intends to use, or has used, the mark in Canada.

The proposed amendments will simplify and expedite the registration process, and appear to have been drafted with these objectives as the primary goal. However, removing the use requirement will allow applicants with little or no legitimate interest in a trademark to obtain enforceable rights, to the detriment of those that have used, or have a genuine intention to use, the same mark in commerce.

Trademark owners have been given new tools to enforce their rights. Bill C-31 provides for two new grounds for opposition: i) as of the filing date the applicant was not using or did not intend to use the trademark; and ii) as of the filing date the applicant was not entitled to use the trademark. By offsetting the simplified registration process with expanded grounds of opposition, the proposed amendments to the Trade-marks Act look to shift the responsibility of ensuring that trademarks have been used before the date of registration from the Registrar of Trade-marks to trademark owners. Inevitably, this will result in increased costs to trademark owners who will need to police the market and incur the costs of opposition and expungement proceedings.

Nice Classification

Currently, Canada is one of the few countries where the products and services in a trademark application are not set out in the classes defined in the Nice Classification. Instead, applicants individually list a range of products and/or services. Presently, there is a single filing fee regardless of the number of products and services included in the application. The proposed amendments to the Trade-marks Act provide that the current practice of describing the goods and services in ordinary commercial terms will be maintained. However, applicants will also be required to classify the products and services according to the Nice Classification.

Whether filing fees will increase as a result of the use of the Nice Classification scheme remains to be seen; this will be addressed by way of changes to the Regulations, which is not part of Bill C-31. There will certainly be a learning curve for examiners when the Nice Classification is implemented, which has the potential for increased office actions and delays. This increased expense will not be limited to applications. The amendments provide the Registrar with the ability to request that the owner of a trademark registration group the goods or services according to the Nice Classification with the threat of expungement if the trademark owner does not respond.

If there is a dispute over the appropriate Nice Classification, the Registrar's decision is final. Bill C-31 specifically provides that any question arising as to the class which any goods or services are to be grouped shall be determined by the Registrar, whose determination is not subject to appeal.

Term of Registration

The amendments to the Trade-marks Act will alter the term of registration of a trademark from 15 years to 10 years. Renewal fees will therefore be incurred every 10 years.

Conclusion

Bill C-31 went to committee on April 8, 2014. Professional associations have communicated objections, and have asked that the proposed amendments to the Trade-marks Act be made the subject of a separate bill which can receive detailed consideration and input from interested parties. If history is any indication, it is unlikely that these submissions will be favourably received. As noted by Aaron Wherry in “The Omnibus Question” in Macleans magazine, “not a single budget bill since 2011 has been amended by a committee studying it: 2,000 pages of legislation passed by the House without a single change”.

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Bennett Jones LLP | Attorney Advertising

Written by:

Bennett Jones LLP
Contact
more
less

Bennett Jones LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.