Canadian Government Introduces Significant Changes To Trade-marks Statute Through Budget Bill

On March 28, 2014, the Canadian government introduced its budget implementation bill, Bill C-31, the Economic Action Plan 2014, No 1. The Bill, which proposes changes to over 60 different unrelated federal laws including the Trade-marks Act, is designed to enact measures from the 2014 federal budget. Bill C-31 proposes substantial changes to Canada’s trade-mark laws and practices. Some are designed to make them compliant with international trade-mark treaties, namely the Madrid Protocol, the Nice Agreement and the Singapore Treaty (for a summary of these treaties, see this link). However, the Bill includes amendments that will eliminate providing a basis for applying for a mark (actual use or proposed use in Canada). Furthermore, the applicant will no longer be required to have used the mark anywhere in order to gain registration of its mark. This change is shocking in a country where use has been the basis for trade-mark rights both under the common law and since the enactment of the first statute close to 150 years ago. Canada is not required to eliminate use in order to comply with the international treaties including Madrid. Unlike earlier amendments to the Trade-marks Act, which were introduced only after significant public consultation, these amendments were included in a budget Bill with no real connection to trade-marks and without any input from the profession. These changes will lead to greater uncertainty and additional costs for trade-mark owners at every stage of the process, choosing a mark, prosecuting a mark, registering a mark, and enforcing a mark. The Bill also includes amendments that would adopt the Nice Classification system (NCS) for goods and services. Applicants will still need to define goods and service in ordinary commercial terms, but will also need to group and classify the goods and services according to the NCS. Also, the amendments give the Registrar discretion to require an owner of an existing trade-mark registration group to classify the goods and services in the existing registration according to the NCS. [For a brief description of the NCS, follow this link to an earlier E-TIPS® mini-article on the topic by Darren Hall]. The Bill includes amendments that would reduce the registration term from 15 years to 10 years, provide an expanded definition of trade-mark to include non-traditional marks, allow for divisional applications and replace the spelling of “trade-mark” in Canada to “trademark”. Summary by: Adam Lis