Trademarks in Canada May Never be the Same
With Bill C-31, the Economic Action Plan Act 2014, receiving Royal Assent, we can expect to see some significant changes to our system of trademarks implemented. Many of these changes were made for the purpose of acceding to three international treaties related to trademarks, the Madrid Protocol, Singapore Treaty and Nice Agreement. As a result, Canadians will soon be able to take advantage of international trademark filings under the Madrid Protocol. This allows for the filing of a single international trademark application to provide protection in multiple jurisdictions.
As with any type of change, there are several changes that are not being received as favorable to our Canadian trademark system. One of the changes that will cause the most impact on our system is the removal of the requirement for use of a trademark prior to registration. While it is currently possible to file a trademark application based on an intention to use the mark, an application will not be registered until the use of the trademark has actually occurred. Under the new Trademarks Act, it will be possible to obtain a registration for a trademark having never used it and having never had the intention to use it. Consider the potential consequence for your own trademarks. What if someone else had registered them before you? Would it have been simple to change your name? Cost-effective? Practical? What would your options be? You could potentially buy the rights to the trademark from the other party that registered it first, go to court to have the registration invalidated or attempt expungement proceedings. All of these options cost substantially more than the fees required to register your trademark in the first place and, in the case of court or expungement proceedings, use valuable time and resources.
There has also been a discussion of changes to the governmental fees associated with filing a trademark application. In most countries that adhere to the Nice Agreement, which provides for classification of goods and services consisting of 45 classes, the government charges filing fees based upon the number of classes an application covers. This could substantially increase the cost of filing a trademark application in Canada. However, until the fee schedules are announced, we won’t know exactly what the effect will be.
While there are many changes that are to be implemented based upon the new Trademarks Act, I have chosen to highlight only a select few. These changes may have a profound impact on your current and future trademark rights. If you are on the fence about whether or not to file a trademark application, I would highly recommend speaking to a Trademark Agent who can discuss the pros and cons with you. Until the changes have been made and proclaimed into force, we can only surmise as to the impact they will have.