by Brian Isaac
As reported in our March 31, 2014 IP Update, the Canadian government has introduced the most significant changes in 50 years to the Trademarks Act through an omnibus Budget Implementation Bill (Bill C-31, Economic Action Plan 2014 Act, No. 1). The Bill is proceeding through Parliament and is expected to pass in the near future.
Once the Bill passes, the amendments will come into force after suitable regulations have been prepared. The intent of the government appears to be that most of the amendments will come into force in the fall of this year. However, regulations implementing international filing of trademark applications under the Madrid Protocol are expected to be delayed until 2015.
What should you be considering now before these changes come into force?
Nice Classification system
There is currently no requirement in
It is anticipated that fees for applications may increase if registration is sought for multiple classes of goods and services. You should therefore consider expediting the filing of applications for trademarks used or intended to be used in association with multiple goods or services in
Colour and sound marks
If your unregistered trademarks include colour applied to the surface of goods or sound marks, consideration should be given to applying to register them now. Such marks currently do not require proof of acquired distinctiveness, but this will likely change after the proposed amendments come into force. Acquired distinctiveness is established by way of affidavit and/or survey evidence, which can be quite costly. Further, if distinctiveness is not established throughout
Shortened renewal period
Another change is that the renewal period for Canadian trademark registrations will be reduced to 10 years from the current 15 years. Registrations issued prior to the amendments taking effect will retain their 15 year term for the first renewal under the new regime. While it is unlikely that an application filed now will issue to registration before the amendments take effect, delay in implementation of the amendments is always possible. Owners of pending applications may wish to expedite registration to the extent possible.
Trademark squatters and pirates and crowded trademark register
While the amendments will not change the fact that
The amendments to the Trademarks Act will generally result in simplified procedures for obtaining Canadian trademark registrations. That, combined with the anticipated implementation of the Madrid Protocol, is likely to result in more applications being filed in
For further information regarding the upcoming changes to the Trademarks Act or assistance with auditing your trademark portfolio, please contact a member of our firm’s Trademarks group.
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.