Canada's amended Trademarks Act is expected to come into force by the end of the year, and with it comes major changes, Toronto IP lawyer and registered trademark agent John Simpson tells The Practice.
The Practice is a legal news show where Christine Bentley and Kate Wheeler – both of SiriusXM's What She Said! – bring their take on the legal issues of the day, along with sources from AdvocateDaily.com.
In a segment on changes to the act, Simpson, principal with Shift Law, explains the government's reasoning behind the changes is that they want to bring Canadian law in line with international standards. The government also wants to modernize Canadian trademark law to make it more streamlined and accessible to businesses, he says.
Simpson says the most significant change is the removal of the requirement to use a trademark before you can get a registration.
"That's significant because, traditionally for the past 140 years, Canadian trademark applicants to register a trademark have had to demonstrate that they've used the trademark or declare that they've used it or propose to use it. That's no longer going to be the case,” he says. “It matters a lot because what's likely to happen is that applicants from around the world are going to be able to file applications and secure trademark registrations in Canada without any intent to use that trademark in the course of a business."
Simpson says it's more important than ever for Canadian companies to register the trademarks that they are using, "so that they're not in a position where some foreign applicant registers a trademark and puts the company in a position where they have to change their trademark after many years of use."