Since our last report the government has continued with its race to amend the provisions of the Trademarks Act although the pace has slowed.
The short title of this Bill is The Combatting Counterfeits Products Act since the first portion of the bill deals with counterfeit products and border protection measures. The second part of the bill contains amendments to the Trademarks Act. This Bill was held up when Bill C-31 was introduced and has not yet been given third reading. In addition, it has been substantially amended by Bill C-31 and the majority of the amendments to the Trademarks Act contained in this Bill will be removed as it moves forward with the exception of the measures in the first portion of the Bill.
Presumably the government remains committed to implementing Bill C-8.
The government introduced Bill C-31, to implement certain provisions of the budget tabled in Parliament on February 11, 2014 and other measures. After a brief review of the provisions in various Parliamentary committees the Bill received Royal Assent on June 19, 2014. The Trademarks Act is amended 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;
• allow divisional applications;
• eliminate the requirement to file a declaration of use of a trademark before registration;
• reduce 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.
It seems that one of the government’s reasons for implementing these changes is to assist Canadian businesses by making available to them the benefits associated with harmonizing Canadian trademark legislation with the legislation of many other countries of the world and simplifying the process. While a majority of the changes are positive in nature it remains to be seen whether anything will be more efficient as a result of these amendments.
The Madrid Protocol
In certain instances the ability to take advantage of the Madrid Protocol is positive but, the benefits only apply in a limited number of cases.
The Nice Classification System
For years Canadian trademark owners had the ability to obtain a registration for a lengthy list of wares which cut across many of the Nice classes on the payment of one filing fee. While the fees to be charged by CIPO under the amended Act have not been finalized, in virtually all other countries who apply the system, separate class fees are required which results into higher fees on filing and renewal.
Registration Without Use
The amendments 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 or to use the mark before obtaining a registration. The government position seems to be that since an opponent can oppose an application on the basis that the applicant did not use or propose to use the mark, the right to obtain a registration is still based on use. This does not answer the concerns because only a small percentage of current applications are opposed. In addition, if an interested third party chose to oppose, it is practically speaking, difficult to succeed on a ground of opposition based on lack of an intention to use a mark.
There are significant concerns with respect to the potential negative impact that this change will have on the Canadian trademark system. The concerns relate to the following problems that this change the will cause;
a) The cost and complexity, as well as the amount of uncertainty, relating to decisions concerning the selection and use of trademarks and trade names in Canada will be increased as we will no longer be able to rely on the register. Marketplace investigations will need to carried out to determine if a registered trademark is in use;
b) The lack of useful information on the register will require that expensive investigations be carried out before meaningful advice can be provided concerning the likelihood of success in a trademark opposition or an action for infringement;
c) The register will become cluttered with registrations which are not supported by use including defensive registrations filed by trademark owners to isolate themselves from potential competition;
d) More expensive trademark oppositions will be required to protect the rights of trademark owners;
e) The potential exists for the creation of trademark “trolls” as applicants will be able to obtain a registration of a mark and the right to enforce it under the Act without showing or saying they used the mark;
f) While registrations that are not supported by use can be attacked under section 45 of the Act it will not be possible to do this until three years after registration. In addition section 45 proceedings can take a significant period of time to resolve and can be expensive.
The Status of Bill C-31
The Bill has received Royal Assent but it has not yet been proclaimed into force. Representatives of CIPO recently indicated that they plan is to implement all of the provisions of the Bill at the same time and that this will not likely take place until late 2015 or early 2016.
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.