Amending Canada's trademarks regime
The Canadian Intellectual Property Office is considering amendments to the Trade-mark Regulations under the authority of the Canadian Trade-marks Act, with a view to updating and simplifying the administration of the trademarks regime in Canada.
The proposed amendments to the regulations seek to simplify opposition procedures, and include modifications to measures relating to the examination of trademarks, with the stated intention that transactions between applicants and the Registrar of Trade-marks be streamlined. Feedback from the public has been received and is now being considered by the Trade-marks Office.
Updating the trademarks regime
In this era of technology, it is important that office procedures reflect business realities. For example, correspondence addressed to the registrar can currently be sent by electronic means; this does not, however, apply to evidence submitted as part of an opposition, or affidavits or statutory declarations furnished during summary expungement proceedings.
The proposed amendments seek to change this, making it possible to file a copy of affidavits or declarations electronically, and retain the originals for one year after the expiry of appeal periods.
Such changes will be especially helpful to agents where affiants reside and execute their affidavits outside the city in which the agent is located. It is often necessary to seek an extension of time to file original affidavits and declarations simply due to time constraints created by using the standard mail.
"It is often necessary to seek an extension of time to file original affidavits and declarations simply due to time constraints created by using the standard mail."
While protection mechanisms may need to be built into the changes, such as provisions for managing requests by opposing parties to view originals, and consequences for failure to comply with the retention requirement (as suggested by the International Trademark Association), the changes will ultimately be helpful in bringing office procedures into line with business realities.
Non-traditional trademarks
The proposed amendments specifically provide for applications for the registration of trademarks consisting of holograms, motion marks and sound marks.
This comes after the office was recently ordered by the Federal Court to accept applications for trademarks consisting of sound marks, and may mark the beginning of a more flexible interpretation of existing trademark legislation, in line with Canada’s international treaty obligations.
Revising applications to claim use
Under the current regulations, an application cannot be amended from one that does not claim use or making known of the trademark in Canada before the filing of the application to one alleging such use or making known. The proposed amendments include the repeal of this rule, such that a proposed use application could be amended after filing to be based on use prior to the filing date.
Several commentators observed that jurisprudence indicates that the relevant date for considering grounds of opposition based on an improper date of first use is the date of filing the application.
Therefore, any application amended from proposed use to use in Canada would be invalid under current jurisprudence, since the date of first use would have been incorrect as of the filing date of the application. If this regulation were to come into force, jurisprudence would probably need to interpret the section more flexibly.
Recognition of trademark transfers
Currently, in order to request the recordal of a transfer of a trademark that was effected by means other than a change in the owner’s name, the registrar will require evidence of the transfer prior to updating the register.
Under the proposed regulations, the registrar would recognise a transfer of a trademark application or registration upon receipt of a mere written request from either the transferor or transferee, and would only require evidence of the transfer to be furnished in instances where there are reasonable grounds to doubt the veracity of any indication contained in the request.
During the public consultation period, multiple groups commented that this sets a lower standard for the recognition of transfers than the current standard, and has not been justified. Concerns have been expressed that without documentation proving the transfer, there is more room for potential fraud.
However, as with all of the above proposed amendments, it remains to be seen whether this amendment will come into force.
