Implementation of amended Trademarks Act not expected before 2018


Last year the government of Canada passed into law Bill C-31, which contains numerous significant amendments to Canada’s Trademarks Act. Among the significant changes to Canadian trademark law will be the elimination of the requirement for declaring use in Canada prior to obtaining a registration. However, recent news from the Canadian Trademarks Office regarding a delay in the implementation of this provision warrants consideration of the optimal strategy to be adopted in connection with the requirement to declare use in the interim period.

Under the current regime, when a trademark application is based upon 'proposed use' of the mark (or 'intent to use' the mark) in Canada, on allowance of the application the applicant must file a declaration stating that use of the trademark has commenced in Canada in association with goods and/or services for which there was no use in this country at time of filing. An exception to this rule, typically available only to applicants outside of Canada, is when the same goods and/or services are covered by a home registration and use abroad basis.

In cases where a declaration of use is required, the initial deadline is normally three years from the filing date. This deadline can, under current practice, be extended for an additional three years in six-month increments. Beyond that point, extensions of time are granted only in exceptional circumstances. Thus, to avoid the abandonment of an application, a 'proposed use' applicant effectively has a fixed period of time of six years from the filing of the application within which to commence use of the mark in Canada with all the goods and/or services covered by its application or alternatively, at least some of the goods and/or services, but with the result that the ensuing registration would be restricted accordingly.

The elimination of the need to file a declaration of use, once implemented, will apply not only to applications filed after the change in the law, but also to all pending applications. Accordingly, since the implementation was previously anticipated for 2017, an applicant having yet commenced use of its mark, but with a window of time to file a declaration of use extending to 2017, could strategically request consecutive extensions of time until the new law comes into force. However, based on comments recently made by the Trademarks Office, it now appears that the amendments to the Trademarks Act will not come into force until at least the beginning of 2018.

In view of this delay, applicants with a window of time to file a declaration of use that does not extend past 2017, and who had been relying upon early implementation of the new law, may need to consider moving forward with use of the mark in Canada in order to file a declaration more quickly than previously had been anticipated, or consider filing a new application if the current deadline cannot be met.

Tomek Nishijima, Smart & Biggar/Fetherstonhaugh, Montreal

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