Canadian Trademarks Law and Practice: Extensive Amendments

Author: Benoit Archambault

Earlier this year, the Canadian government introduced the first procedural step towards ratification and implementation of five intellectual property law treaties in order to align Canadian practice with most other countries in the world. The treaties include:

  • The Madrid Protocol, designed to assist trademark owners in registering their marks in multiple jurisdictions by filing a single international application;
  • The Singapore Treaty, harmonizing administrative procedures between countries;
  • The Nice Agreement, setting out a classification system of goods and services in trademark applications;
  • The Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (Hague); and
  • The Patent Law Treaty.

Amendments to the Trademarks Act

The Canadian government also recently enacted the Economic Action Plan 2014 Act, No. 1 (Bill C-31), which includes the most important changes to the Canadian Trademarks Act since 1953.

While the amendments are, in part, designed to insure that Canada moves toward greater conformity with international laws and regulations, they will also profoundly affect other aspects of the practice. Here are some of the key changes.

Expanded Definition of Trademarks

The definition of trademarks now includes “a sign or combination of signs that is used or proposed to be used by a person for the purpose of distinguishing or so as to distinguish their goods or services from those of others”.

These “signs” include a letter, a numeral, a colour, a figurative element, a three-dimensional shape, but also other non-traditional marks such as a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign.

Use of the Nice Classification

All goods and services listed in new trademark applications, or in renewal of existing trademark registrations, will now need to be classified in accordance with the Nice Classification. The introduction of this classification will likely impact trademark filing and maintenance costs in Canada as the Canadian government will likely follow the practice of other countries and impose separate filing fees and renewal fees for each class of goods and services covered in an application or registration.

Removal of the Necessity of Identifying Filing Grounds or Filing a Declaration of Use

The amendments remove the need for applicants to identify the filing ground or a specific date of first use of their marks in Canada (or in any country), or the need to file a subsequent declaration attesting to the use of their trademarks in Canada, prior to registration.

This amendment is creating significant controversy among Canadian practitioners as it is feared this may open the door to “trademark trolls” in Canada which may now be able to register trademarks without initially having to show use of this mark in Canada or elsewhere. While use of a trademark in Canada will remain the guiding principle for the recognition of trademark rights, the new amendments will likely create initial uncertainty regarding entitlement. This will likely have an impact on opposition and litigation proceedings.

Other Amendments

Other notable amendments include the possibility to divide trademark applications in Canada, the reduction of the term of protection of a registration from 15 years to 10 years, and other provisions regarding corrections of errors, and the streamlining of formalities, including application requirements, registration of assignments, and others.

In Conclusion

While Bill C-31 has now been passed into law, some of the amendments to the Trademarks Act will take some time before they come into force. In the coming months, the Canadian Intellectual Property Office will engage in consultations on changes to the trademarks regulations, and will likely issue practice notices implementing requirements under the Madrid Protocol and Nice Agreement. We will closely follow these consultations.


Deadlines Under Federal Legislation Temporarily Extended Due to COVID-19

Sept. 23, 2020 - Introduction Parliament passed on July 27, 2020, the Time Limits and Other Periods Act (COVID-19) (Time Limits Act), which we summarized in a previous bulletin. Briefly, the Time Limits Act automatically suspends statutory time limits for federal civil proceedings for six months and...

The Times They Are A Changin’ Canadian Privacy Law in the Private Sector

Sept. 18, 2020 - When privacy laws for the private sector were in their infancy in Canada, more than 20 years ago, there was no Internet of Things, Facebook was FaceMash and limited to the Harvard campus, and Google was a toddler. In 2020 there are on average 4 billion Google searches a day, Facebook has more...