Significant Changes to Canada’s Trade-marks Regime

Canada’s trade-mark regime was officially given a maaaaaajor dose of botox on June 19, when proposed changes to trade-marks legislation was given royal assent. Whereas some revisions were expected, others have brand owners and their trusty trade-mark lawyers up in arms.

First, let’s go over the expected changes. Canada is now a signatory to a series of international trade-mark treaties, Madrid, Nice and Singapore. This brings Canada into alignment with the global system and, frankly, makes sense if Canada is going to continue to be a player in the global marketplace.

The good news? What qualifies as a trade-mark is now expanded. In addition, the registration process will be streamlined.

The unfortunate news? Trade-mark applicants will now be required to adhere to a classification system with respect to their wares and services – this may increase costs as there will likely be a “per class” government fee.

The bad news? Canada is no longer going to be a use-based jurisdiction. Historically, any brand owner is required to use the trade-mark in Canada in order to obtain trade-mark rights. This has been foundational to Canadian brand protection. The impending revisions to the legislation do away with this concept. Thus, there is no longer a use requirement in order to obtain a trade-mark registration. This is less than ideal. This allows “brand pirates” to secure registrations in Canada, which can then be used to block legitimate brand owners from launching their brands in Canada. If you’ve ever had dealings with the Chinese trade-mark regime (and I’ve had many clients do so), it is a comparable regime. Bottom line, if you want to secure your trade-mark rights in Canada, you should do so quick before the “brand speculators” do so.

As with any type of new legislation, it takes time for the changes to come into practice, which is beneficial for the brand owner. I highly recommend that brand owners take advantage of this time lag to file their trade-mark applications now and secure their rights ahead of the onslaught of “brand speculators/pirates”.

View more from Canada Fashion Law. Follow Ashlee Froese on Twitter at @BrandFashionLaw.

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