Government introduces extensive amendments to Trademarks Act

On March 28 2014 the Canadian government introduced Bill C-31, the Economic Action Plan 2014 Act, No 1, as part of an omnibus bill which provides for changes to many pieces of legislation in Canada, including significant amendments to the Trademarks Act. In part, the new provisions are designed to put Canada in a position to adhere to major international trademark treaties, including the Madrid Protocol, the Nice Agreement and the Singapore Treaty. However, the changes go well beyond the requirements of the treaties and amount to the most extensive amendments to Canadian trademark law and practice since the enactment of the Trademarks Act in Canada in 1953. 

Under the provisions covered by the bill, some of the unusual - or even unique - aspects of the Canadian Act have been changed. For example, a 'trade-mark' will become a 'trademark', 'wares' will become 'goods' and both associations of similar trademarks and the "distinguishing guise" will disappear from Canadian practice.

Among the more specific and very significant changes to the Canadian trademark regime that are included in the bill are the following:

• The filing of applications will be simplified, since applicants for registration in Canada will no longer need to identify a date of first use of the mark in this country. Details of use and registration of the mark abroad will also no longer be required.
• The Nice Classification of goods and services will be adopted.
• The definition of a 'trademark' will be greatly expanded to cover a “sign or combination of signs” including 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.
• It will be possible to divide applications.
• A declaration of use of a mark in Canada will not be required before the registration process is completed.
• The term of registration of a mark will be reduced from 15 years to 10 years.

Of particular note is the fact that no information regarding use of the trademark in Canada or abroad will be required on filing. While the priority of rights will still be based on the party first to use the mark in Canada, that information will be absent from the application and will apparently be left to those believing that they may have superior rights to determine. Moreover, the applicant for registration will not be required to confirm use of the mark in Canada prior to registration, nor will proof of use be required upon renewal, so that a mark may be registered and remain on the register, unless challenged for non-use after three years from the date of registration.  

These changes are a significant departure from previous Canadian practice, again not in the foundational basis of entitlement between parties, but in the availability of information regarding use, which will no longer be required to be provided to the Trademarks Office during the application and registration process, but will be left to be investigated to third parties who believe that they may have prior rights.

Also of particular interest is the adoption of the Nice Classification, which will be welcomed by many as a move to bring Canada into line with international practice, although this change may not bring any significant relief from the requirement for very specific specifications in Canada, since the requirement for a description of the goods and services “in ordinary commercial terms” will remain in place. Moreover, while not made clear in the amendments, it seems certain that there will be a new per class fee structure, thus leading to the disappearance of Canada’s long-standing bargain of one fee with no limitation on the number  goods and services covered by the application.

Numerous other amendments will modernise Canadian practice and broaden the scope of the type of marks that can be registered to include 'non-traditional' marks such as scents, tastes and textures, as well as allowing for dividing of applications.

The full effect of the sweeping amendments to the Trademarks Act, including the effects upon the previous and newly established rights, remain to be fully analysed and fully understood. However, it is clear that many fundamental trademark concepts and practices will change.

Keltie Sim Luft, Smart & Biggar/Fetherstonhaugh, Toronto