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.
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; and
- 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.
Bill C-31
The Government introduced Bill C-31, to implement certain provisions of the budget tabled in Parliament on February 11, 2014 and other measures. 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 a previous bill and adds additional provisions. It is not clear why the potentially significant changes of Bill C-31 would be included in an omnibus Bill implementing a budget.
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 and the failure of the Government to engage in any consultations with interested parties.
It seems there is a lengthy history on the part of the government of not agreeing to changes to bills that implement a budget and to ensure that the progress of the bills through Parliament is not delayed, so we may be stuck with these changes.
The Status of Bill C-31
After second reading in the House of Commons the Bill was referred to the Standing Committee on Industry, Science and Technology to study the part of the Bill related to the Trade-marks Act. The Canadian Bar Association made submissions to the Government concerning the Bill and suggested that the provisions of the Act dealing with use by removed from the Bill and be carefully considered. It seems that all other relevant professional associations have made a similar request. We can only hope that common sense will prevail and that this will occur.
John McKeown
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370
Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.