Major changes coming to Canadian trademark law

Canada’s Trade-marks Act is about to undergo its most significant amendments since it was first enacted in 1953. Even the spelling of “trade-mark” will change (to “trademark”). Trademark practitioners and their clients should take note of the proposed changes (outlined below) as some will be relevant to trademark selection and prosecution strategy and enforcement decisions that should be made before the changes come into effect. Some of the changes were introduced a year ago with Bill C-8, the Combating Counterfeit Products Act. This legislation, among other things, expands the definition of “trademark” in the Trademarks Act to include scents, colours, tastes and textures that - like traditional brand names or logos – are used to distinguish the trade source of goods or services.  More recently, in January 2014, Parliament tabled three international treaties (the Madrid Protocol, the Singapore Treaty and the Nice Agreement) that each address how trademark owners may obtain trademark rights domestically and internationally.  Then, last week, on March 28, 2014, significant changes to many aspects of Canadian trademark law were smuggled into a federal omnibus budget implementation bill. Overall, the proposed changes are intended to bring Canada in line with international standards and to encourage Canadian businesses to take advantage of the international trademark system.  However, at least in the short term, the changes are likely to create uncertainty, risks and additional expenses for trademark owners when adopting new trademarks and when registering and protecting their rights in the courts and in the Canadian Intellectual Property Office. Here are five of the most significant changes on their way, with some comments:

1. The term of trademark registration is changing from 15 years (renewable) to 10 years (renewable). Existing applications and registrations will be affected, according to the transitional provisions.
2. The definition of “trademark” will include a personal name, a colour, a three-dimensional shape, a hologram, a moving image, a mode of packaging, a sound, a scent, a taste, and a texture. Evidence of acquired distinctiveness will be needed to register some of these non-traditional trademarks (e.g. textures, tastes and scents). Prosecuting and determining relative rights in these non-traditional trademarks will be accompanied by significant uncertainty. For instance, how will the Canadian Intellectual Property Office or a court determine whether one texture is confusing with another, or whether the taste of a product is a matter of utility (i.e. to make the product more appetizing – not protectable as a trademark) or an indicator of trade source (i.e. to distinguish the vendor from other vendors of similar products)?
3. “Proposed use” trademarks will be registrable without having to file a declaration of use. This will likely clutter the register with “deadwood” trademarks and may have the unintended effect of encouraging “trademark trolls” to register and enforce rights in trademarks that they never exploit themselves.
4. Goods and services descriptions in trademark applications will have to conform with the international Nice classification system. It’s unclear whether applicants will have to pay additional fees for each class of goods or services, as is the case in other Nice member countries (e.g. the U.S.).
5. Applicants will no longer have to include in applications to register a trademark a date of first or provide details of use or registration abroad. This will make it more difficult (and expensive) for other trademark owners to determine the potential impact of new applications and assess whether or not to oppose them.

Stay tuned for more on these proposed amendments as they work their way through the parliamentary process.