June 04, 2014
Canadian Trademark Reform
By: John McKeown
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The Conservative Government has been increasing its efforts to amend the provisions of the Trade-marks Act. Presumably this is being driven by the negotiation of the Comprehensive Economic and Trade Agreement (CETA), the free trade agreement between Canada and the European Union.
This Bill was first introduced in March 2013 as Bill C-56 but that Bill died on the order paper. It was subsequently reintroduced as Bill C-8 in October 2013. The short title of the Bill is the Combating Counterfeit Products Act1 since the first portion of the Bill deals with counterfeit products and border protection measures. However, the Bill also includes a number of amendments to the Trade-marks Act. The amendments include the following matters, among others:
• A new definition of a certification mark which would allow an applicant to apply on the basis of proposed use;
• Deletion of the term "mark" and its replacement by the term "sign" which would be defined to include "a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign." This would significantly broaden the scope of the scope of what could be registered as a trademark;
• An express right to deny the registration of a trademark if, in relation to the goods or services in association with which it is used or proposed to be used, its features are dictated primarily by a utilitarian function;
• During the examination of a pending application an examiner would be entitled to consider the inherent distinctiveness of the applied for trademark, to request that evidence be filed to show that the trademark is distinctive and to refuse the application if not satisfied the trademark was distinctive;
• It would be possible to divide an application so that a divisional application could be prosecuted separately;
• Opposition procedures would be amended to attempt to speed up the process;
• The Federal Court would have jurisdiction to expunge the registration of a trademark, on the application of any interested person, if the court decided that the registration was likely to unreasonably limit the development of any art or industry;
• The limitations on the assignment of associated trademarks contained in the Act would be removed;
• The Registrar would have jurisdiction, on application by the registered owner of a trademark made to make amendments to the register to a) merge divisional registrations of the trademark that stem from the same original application, b) within six months after an entry in the register is made, correct any error in the entry that is obvious from the documents relating to the registered trademark.
The Five IP Treaties
On January 27, 2014 the Minister of Foreign Affairs tabled five IP treaties in the House of Commons:
• the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks;
• the Singapore Treaty on the Law of Trademarks;
• the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks;
• the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs ("Hague"),
• the Patent Law Treaty.
This is the first procedural step towards ratification and implementation of these treaties. However, it is indicative of fairly significant changes to Canadian IP laws and a harmonization of those laws with the laws of a considerable number of countries. The Treaties can only be ratified after the changes have been made to the relevant legislation.
The Government next introduced Bill C-31, to implement certain provisions of the budget tabled in Parliament on February 11, 2014 and other measures.2 This Bill includes division 25 of Part 6 which will amend the Trade-marks Act to in broad terms to, among other things:
• change the name of the Act to the Trademarks Act;
• make that Act consistent with the Singapore Treaty on the Law of Trademarks;
• add the authority to make regulations for carrying into effect the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks;
• simplify the requirements for obtaining a filing date in relation to an application for the registration of a trademark;
• eliminate the requirement to file a declaration of use of a trademark before registration;
• reduce of the term of registration of a trademark from 15 to 10 years; and
• adopt the classification system established by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.
Bill C-31 covers all of the amendments introduced in Bill C-8 and adds additional provisions. It is not clear why the two Bills were introduced so closely in time to each other and why the potentially significant changes of Bill C-31 would be included in an omnibus Bill implementing a budget. The trademark provisions of each Bill are not completely consistent so we will have wait until the intentions of the Government are clarified. There are 101 subsections in Bill C-31 which coordinate amendments contained in Bill C-8.
Unfortunately, Bill C-31 contains provisions which will allow an applicant for a trademark to obtain a registration without any requirement to specify a date of first use of the trademark in Canada. There are significant concerns with respect to the potential negative impact that such a change will have on the Canadian trademark system.
It seems there is a lengthy history in the part of the government in not agreeing to changes to Bills implementing a budget, so we may be stuck with these changes.
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