On March 28, 2014, the Canadian government introduced the Economic Action Plan 2014 Act, No. 1 as part of an omnibus budget implementation bill. The bill includes significant amendments to the Trademarks Act that are designed to put in a position to adhere to major international trademark treaties, including the Madrid Protocol, the Nice Agreement and the Singapore Treaty.
Continuing the trend set by Bill C-8, the pending Combatting Counterfeit Products Act, the new bill repeats some amendments included in the previous bill and includes additional provisions, repealing or replacing some of the unusual or even unique aspects of the Canadian Act. For example, a "trademark" 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:
- Filing of applications will be simplified, since applicants for registration in 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 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.
The full effect of the sweeping amendments to the Canadian Trademarks Act, including the effects upon the previous and newly established rights remain to be fully analyzed and fully understood, and we will be reporting on these in the coming weeks. However, it is clear that many fundamental trademark concepts and practices will change.
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.