WIPR Leaders 2020: Canada practice update

Canada’s IP regime has undergone significant change in recent years. Changes to the Patent Act and new Patent Rules came into force on October 30, 2019. A new Industrial Design Act and Industrial Design Regulations came into force on November 5, 2018.

Copyright laws were significantly amended in 2012, and more changes may be on the horizon. Following an extensive review of Canada’s Copyright Act, comprehensive recommendations to amend Canadian copyright laws were issued, and it remains to be seen what legislative amendments may follow.

In the meantime, Canada committed to extend the general term of copyright protection from life plus 50 years to life plus 70 years, and we await implementing legislation.

Trademarks

In this article, we will focus on sweeping amendments to Canada’s Trademarks Act that came into force on June 17, 2019 after a long wait. Canada now has simplified filing procedures, as filing grounds and use claims are no longer required. Simultaneously, Canada acceded to the Madrid Protocol, and foreign applicants are now able to designate Canada in international applications.

All foreign applicants should be aware of several notable features of Canadian trademark law and practice. Currently, the Canadian Intellectual Property Office (CIPO) examines for both inherent registrability and relative rights, as well as technical requirements.

A new examination ground of “inherent distinctiveness” has been added, and CIPO has been raising these objections more frequently than many Canadian practitioners expected. CIPO has also issued Practice Notices for registration of non-traditional marks in Canada, which suggest continued challenges to registering non-traditional marks in Canada under the new trademark law regime.

Canada has high standards for specificity of goods and services. This, combined with a new classification regime that becomes mandatory along with the ability to use the Madrid Protocol, raises the likelihood of many goods and services objections. Online filing systems for national applications have been developed to encourage the use of pre-approved descriptions and classification, but the potential differences may lead to complications.

All applicants, including those thinking of using the Madrid Protocol, should expect that examination and extension of registration rights to Canada will likely to take longer than they do in many other countries.

CIPO’s examination is anything but fast—currently many applications are not examined until 15 months from filing. As a result, Canada has elected an 18-month term within which to notify the International Bureau of a total refusal or a provisional refusal based on an opposition. CIPO has hired new examiners, which are intended to shorten the current delays.

Before filing in Canada, foreign applicants should note that Canada recognises “common law” rights, and owners of unregistered trademarks and tradenames may not only oppose applications, but can also rely on those rights to seek injunctions preventing use and advertising.

In addition, the Trademarks Act contains specific provisions for protection of special rights without registration, for example by public authorities and universities, which can prevent registration without consent of the owner of such rights.

Before using the Madrid Protocol to extend rights to Canada, and possibly exposing an applicant to the risk not only of refusal of its application, but also an injunction preventing use, it is advisable to seek advice of local counsel, who may be able to offer risk-avoidance strategies, including searches for third party rights (registered and unregistered), amendments to the mark, or the goods and services covered in any application. Once that advice is obtained, a more informed decision on use of the Madrid Protocol will be possible.

Use requirement

Among the most significant changes to Canadian trademark law is that use is no longer required for registration in Canada. Even so, use is required for both enforcement and maintenance of rights. Pending legislation will require “use” to enforce rights in Canada, meaning that unlike many countries, registration alone (resulting either from national filings or through the Madrid Protocol) does not provide an automatic right to sue for infringement in Canada.

Also, Canadian registrations of all types are vulnerable to non-use expungement three years after the registration date (for Madrid Protocol filings that is the “Canadian registration date” and not the date of the International Registration).

The potential for cost savings with Protocol filings may be a welcome addition for many companies, but they do not replace the benefits of sound advice from local counsel. Particularly in the early days of Protocol filings in Canada, careful assessment of which marks to file, and when, is recommended.

For more information about changes to Canada’s trademark, patent, industrial design and copyright laws, visit our website at BereskinParr.com.

Janice Bereskin is a partner at Bereskin & Parr. She can be contacted at jbereskin@bereskinparr.com

Catherine Lovrics is a partner at Bereskin & Parr. She can be contacted at clovrics@bereskinparr.com