29 July 2014Jurisdiction reportsVictoria Carrington

Changes to Canadian Trademark Law: there's good news and bad news

Official marks enjoy special status in Canada in that once they are “adopted” by “public authorities” and notice of such adoption and use is given by the Registrar, no other person can adopt in connection with a business, as a trademark or otherwise, any mark that is identical to or resembles an official mark, unless the public authority consents.

The monopoly afforded official marks is quite substantial (some would say heavy-handed) as there is no examination or opposition process and, unlike the confusion test, the field of use and other surrounding circumstances are largely irrelevant to the resemblance analysis. It is also difficult to invalidate official marks or an entity’s public authority status—judicial review proceedings in federal court are, typically, required.

These provisions effectively prevent traders from adopting certain marks, expanding the use of their existing marks or registering trademarks based on previous common law usage, if they correspond to or “so nearly resemble as to be likely to be mistaken for” an official mark, even if the public authority adopted its mark in association with completely unrelated activities or goods/services.

However, Bill C-611 was introduced in Canada’s federal parliament on June 10, which, if passed, will significantly amend Canada’s official mark provisions. A definition of public authority would be added to the Trademarks Act and a third-party opposition procedure for challenging official mark requests would be made available. Moreover, public authority status would be limited to a ten-year renewable term, with each renewal period subject to possible opposition. We will follow the progress of this bill with interest.

Now the bad news

The harmonisation of Canada’s IP legal framework with the laws of its major trading partners has been on the table for years. On January 28, 2014, parliament took the first steps towards implementing various international treaties, including most importantly from a trademark perspective the Madrid Protocol, the Nice Agreement and the Singapore Treaty. This was seen as a generally positive development despite the potential uncertainties associated with updating a legislative regime that has changed little since 1954.

On March 28, 2014, shockwaves raced through the Canadian trademark community when the federal government introduced Bill C-31—officially the Economic Action Plan 2014 Act, No. 1—a piece of legislation intended to implement the budget which contains, among its many provisions, an unexpected and fundamental change in Canadian trademark law that has never been debated or subjected to consultation at any level: the removal of previous use of a trademark, in Canada or elsewhere, as a pre-requisite for registration.

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk