Canadian counsel divided over new trademark regime proposals 04 Apr 14
While proposals to switch the statutory spelling of ‘trade-mark’ to ‘trademark’ have been welcomed, other aspects of Canada’s new trademark bill are proving more divisive.
Dropping the hyphen is just one of numerous proposed amendments to Canada’s Trademarks Act. Speaking to World Trademark Review in the wake of his induction into this year’s IP Hall of Fame, respected trademark practitioner Daniel Bereskin, the founding partner of Bereskin & Parr, says he is “thrilled” that the hyphen is finally getting the boot. Yet he and his firm are strongly opposed to many other aspects of Bill C-31, Economic Action Plan 2014 Act, No. 1. In a press release, Bereskin and his partners, Cynthia Rowden and Scott MacKendrick, argue that the current government has engaged in limited public consultation, despite proposing changes far reaching in their scope. They also suggest that if the legislation is enacted in its present form, thousands of Canadian businesses – especially those of small and medium size – are likely to be adversely affected.
Drilling down into the specifics, Gowlings partner Monique Couture explains that, while primarily directed at Canada’s adherence to the Madrid Protocol, the Nice Agreement and the Singapore Treaty, the proposed amendments are far more sweeping in scope and effect: “For example, in a significant departure from current and historical use requirements, applicants will no longer have to specify or declare that use of the mark has commenced in Canada in order to be granted a certificate of registration. However, applications and registrations will still be vulnerable to use-based challenges such as those based upon prior superior rights obtained through use and allegations of non-use.”
Couture adds that the definition of ‘trademark’ will also be greatly expanded: “Examiners will be able to refuse applications on the basis of distinctiveness. While distinctiveness has always been a ground of opposition and invalidity, current legislation does not allow for examiners to examine an application for distinctiveness; foreign owners will no longer enjoy the benefit of overcoming objections by filing evidence that their mark is ‘not without distinctive character’; and the renewal period for registrations will be shortened to 10 from 15 years.”
Considering the impact the changes may have, Cassels Brock partner, Shane Hardy, recognises that the abandonment of Canada’s requirement for pre-registration ‘use’ and its traditional application filing bases has raised significant concerns among practitioners – in particular, the impact upon domestic trademark searching, opposition strategy and increased costs are seen by some as problematic: “Our delay adopting the Nice Classification frustrates many international brand holders, who would prefer to harmonise the format of their portfolio of international trademark applications. The incremental cost of having to particularise goods and service claims for Canada in ordinary commercial terms often requires the applicant to weight the benefits of registration in Canada against the additional cost of Canadian compliance. No doubt in a number of cases this may have resulted in international brand owners avoiding the Canadian registration system as a whole.”
Still digesting the proposals, Brian P Isaac, partner at Smart & Biggar/Fetherstonhaugh, notes that while there was perhaps not as intensive a consultation as there was in respect of the recent copyright debate, the feeling within and outside of government was that Canada needed to update its trademark law: “There is always uncertainty of change, and uncertainty is always a bit disconcerting. But the system is essentially the same with the exception of one big change - the ability to register without proof of use. The changes are going to assist and hopefully reduce the cost of applications. With Canada being one of the few countries where you have to declare use before you file there is often a lot of back and forth that may be minimised. Therefore the changes are going to make it a little easier for trademark owners to apply here.”
Hardy also points to a number of aspects to the proposed legislation that are positive and should not be overlooked: “The ability to divide applications has long been a glaring omission in Canadian practice. Further, while already proposed within Bill C-8 (the Combating Counterfeit Products Act), the expanded ability to register non-traditional marks will bring Canada into line with many of its trading partners in recognising that more modern brand identification techniques engage all of our senses, and not just our sight and hearing.”
Counsel are clearly wrestling with this new proposed legislation and if the amendments are passed then practitioners and their clients will no doubt experience an adjustment period. Whether the bad outweighs the good remains to be seen. While World Trademark Review doesn’t usually take a side on legislation, in this case we can take a clear stance in welcoming the move to spelling ‘trademark’ without a hyphen!
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