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Trademark Amendments: What You Need to Know

By: John S. McKeown

Background1

The Conservative Government has been increasing its efforts to amend the provisions of the

Trade-marks Act. Presumably this is being driven by the negotiation of the Comprehensive

Economic and Trade Agreement (CETA) - the free trade agreement between Canada and the

European Union.

On January 27, 2014 the Minister of Foreign Affairs tabled five IP treaties in the House of

Commons:

the Protocol Relating to the Madrid Agreement Concerning the International

Registration of Marks;

the Singapore Treaty on the Law of Trademarks;

the Nice Agreement Concerning the International Classification of Goods and

Services for the Purposes of the Registration of Marks;

1 This paper was initially presented as part of an Osgoode Professional Development webinar on September 12, 2014. Mr. McKeown is counsel at Goldman Sloan Nash & Haber LLP.

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the Geneva Act of the Hague Agreement Concerning the International

Registration of Industrial Designs; and

the Patent Law Treaty.

This is the first procedural step towards ratification and implementation of these treaties.

However, it is indicative of fairly significant changes to Canadian IP laws and a

harmonization of those laws with the laws of a considerable number of countries. The

Treaties can only be ratified after the changes have been made to the relevant

legislation.

The Government introduced Bill C-312, to implement certain provisions of the budget

tabled in Parliament on February 11, 2014 and other measures. The Bill was an

omnibus budget bill that was directed at more than 60 other unrelated laws. After a

brief review of the provisions in various Parliamentary committees the Bill received

Royal Assent on June 19, 2014. The Division 25 of the Bill contains the most significant

amendments to Canada’s trademark legislation since 1954.

Division 25 of the bill has not yet been proclaimed into force. This will not likely occur

until 2015 since the regulations required by the changes have to be finalized.

A detailed review of specific provisions of the Division 25 follows under appropriate

headings.

Registration Without Use

The Trade-marks Act has been amended to remove the requirement to specify in an

application a date of first use or any other ground supporting the application.3 In addition

2 The Economic Action Plan Act, No. 1, S.C. 2014, c. 20 (the “Amending Act”) 3. The Amending Act, subsection 339 replacing section 30 of the Trademarks Act.

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Section 40 of the Act has been amended to remove any requirement to file a declaration

of use.4 As a result it will be possible to obtain a trademark registration without ever

using the mark.

There have been no consultations with any interested parties concerning the effect of

this change. There is no requirement for this change in order to implement the IP

treaties. It has been widely suggested that the approach taken has been implemented

at the request of Canadian Intellectual Property Office and appears more driven by the

internal efficiency of the Trademarks Office than the protection of trademark owners.

“Use” has been one of the principal components of the protection of trademarks since

the first statute was enacted in 1868. It has been recognized by the Supreme Court of

Canada on numerous occasions and is consistent with the common law cause of action

for “passing” off which is the predecessor to trademark protection and continues to

provide parallel protection.

There is significant concern with respect to this change and the negative impact it will

have. The concerns relate to the following problems that the change the will cause;

a) The cost and complexity, as well as the amount of uncertainty, relating to

decisions concerning the selection and use of trademarks and trade names in

Canada will be increased as we will no longer be able to rely on the register.

Marketplace investigations will need to be carried out to determine if a registered

trademark is in use;

b) The lack of useful information on the register will also require that

expensive investigations be carried out before meaningful advice can be provided

4. The Amending Act, section 345 replacing section 40 of the Trademarks Act.

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concerning the change of success in a trademark opposition and an action for

infringement;

c) It is likely that more expensive trademark opposition proceedings will be

required to protect the interests of rights of trademark owners;

d) The potential exists for the creation of trademark “trolls” as applicants will

be able to obtain a registration of a mark and the right to enforce it under the Act

without ever having to show use;

e) While registrations that are not supported by use can be attacked under

section 45 of the Act this cannot occur until three years have passed and the

effectiveness of the system will be in some doubt since there is nothing to prevent

the filing of another application. In addition section 45 proceedings can take a

significant period of time to resolve;

f) The implementation of the change which creates trademark rights “in

gross”, invites constitutional challenge which will further jeopardize the

effectiveness of the entire trademark system.

Changes in Nomenclature

In the 1985 statute consolidation, the Trade Marks Act, 1953 was amended and

renamed as the Trade-marks Act. Since then we have been left to deal with the rather

odd term “trade-mark”. However Bill C-31 now provides that the long title of the Act is

An Act relating to trademarks and unfair competition, which may be cited as the

Trademarks Act.5

The term “mark” was not defined in the Act but was the primary element of the definition

of “trade-mark”. This has been changed and the definition of “trade-mark” has been

amended to read as follows:

5. The Economic Action Plan 2014 Act, No. 1, S.C. 2014, c 20 (the “Amending Act”).

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“trademark” means

a) a sign or combination of signs that is used or proposed to be used by a person

for the purpose of distinguishing or so as to distinguish their goods or services

from those of others, or

b) a certification mark.6

Similarly the Act has been amended by replacing “trade-name”, wherever it occurs, with

“trade name”.7

The definition uses the European term “sign” which is defined as follows:

“sign” includes a word, a personal name, a design, a letter, a numeral, a colour, a

figurative element, a three-dimensional shape, a hologram, a moving image, a

mode of packaging goods, a sound, a scent, a taste, a texture and the positioning

of a sign.8

The definition of “wares” has been repealed.9 The term “wares” was a further element

of the definition of “trade-mark”. The definition of “trademark” and other related

definitions now refer to “goods” which is not defined in the amended Act. 10

The reference to a “proposed trade-mark” and “distinguishing guise” have been

removed from the Act. 11

6. The Amending Act, subsection 319(4) replacing the definition and section 361 replacing “trademark”, “trade-marks”, “Trade-mark” and “Trade-marks” with “trademark”, “trademarks”, “Trademark” and “Trademarks”, respectively. 7. The Amending Act, section 362 replacing “trade-name”, wherever it occurs, with “trade name”. 8. The Amending Act, subsection 319(5) adding the definition. 9. The Amending Act, section 319 (3) repealing the definition in section 2 of the Trademarks Act. 10. The Amending Act, section 360. 11. The Amending Act, section 319.

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Certification Marks

The definition of a “certification mark” has been updated.12 Consequential amendments

have been made to sections 23-25, 30, and 49. It will be possible to apply for a

certification mark before it is in use since the definition now refers to such a mark as

being “proposed to be used”.

Distinctiveness

During the examination of a pending application an examiner is entitled to consider the

distinctiveness13 of the applied for trademark and to issue an examiner’s report refusing

an application on the ground that the applied for mark is not distinctive.14

In addition, an examiner will be able to require that the applicant file evidence

establishing that the trademark is distinctive at the filing date if the examiner’s

preliminary view is that the trademark is not inherently distinctive. The examiner shall,

having regard to the evidence adduced, restrict the registration to the goods or services

in association with which, and to the defined territorial area in Canada in which, the

trademark is shown to be distinctive. 15

Previously a mark that was not registrable because of surname or descriptiveness

issues could be registered if, under subsection 12(2), “it has been so used in Canada by

the applicant or his predecessor in title as to have become distinctive at the date of filing

an application for its registration.” Under amended subsection 12(3) which applies in the

12. The Amending Act, sections 319, 334, 336,339 and 353. 13 . If Bill C-8 receives royal assent the definition of “distinctive” will be amended to read as follows. “distinctive”, in relation to a trademark, describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them”. Unlike the previous definition this definition is not restricted by the use of the word “means”. 14. The Amending Act, section 342(2) adding this ground of refusal to section 37 of the Trademarks Act. 15. The Amending Act, section 339 replacing section 32 of the Trademarks Act.

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same situations a mark may be registered “if it is distinctive at the filing date of an

application for its registration, having regard to all the circumstances of the case

including the length of time during which it has been used.” Reference is no longer

made to “use” in Canada which may affect the application of the provision.

Distinguishing Guise

The definition of “distinguishing guise” has been repealed.16 The concept of a

distinguishing guise originally referred to a shaping of wares or their containers or a

mode of wrapping or packaging wares that had become distinctive. The position of the

government is that the same concept is now included within the definition of a “sign” and

subject to a requirement to establish “distinctiveness” during the course of examination.

Broadened Scope for Applications

The new definition of the term “sign” significantly broadens the scope of what may be

registered as a trademark. The use of the word “sign” is also consistent with the

language of the Singapore Treaty.

The process of dealing with applications will be changed. Section 31 provides that an

applicant who seeks to register a trademark that consists only of letters, numerals,

punctuation marks, diacritics or typographical symbols, or of any combination of them,

without limiting the trademark to any particular font, size or colour shall

(a) file a representation under paragraph 30(2)(c) that consists only of characters

for which the Registrar has adopted standard characters;

(b) include in their application a statement to the effect that they wish the

trademark to be registered in standard characters; and

16 . The Amending Act, subsection 319(1).

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(c) comply with any prescribed requirements.

If the trademark consists exclusively or primarily of one or more of the following signs:

(i) the three-dimensional shape of any of the goods specified in the application, or

of an integral part or the packaging of any of those goods,

(ii) a mode of packaging goods,

(iii) a sound,

(iv) a scent,

(v) a taste,

(vi) a texture,

(vii) any other prescribed sign

an applicant shall furnish the Registrar with any evidence that the Registrar may require

establishing that the trademark is distinctive at the filing date of the application for its

registration. The Registrar shall, having regard to the evidence adduced, restrict the

registration to the goods or services in association with which, and to the defined

territorial area in Canada in which, the trademark is shown to be distinctive. 17

These requirements are similar to those required previously for a mark that was claimed

to be clearly descriptive or a distinguishing guise. Since there is a requirement to show

that a trademark is distinctive it may only be possible to secure a registration based on

use. In practice this will mean that considerable time and effort will be given to locating

evidence on a regional basis and preparing affidavits.

17. The Amending Act, section 339 replacing section 32 of the Trademarks Act.

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In addition it is anticipated new regulations or revised practice directions will clarify the

specific requirements for each of these signs.

Entitlement

Section 16 has been amended to read as follows:

16. (1) Any applicant who has filed an application in accordance with subsection

30(2) for the registration of a registrable trademark is entitled, subject to section

38, to secure its registration in respect of the goods or services specified in the

application, unless at the filing date of the application or the date of first use of the

trademark in Canada, whichever is earlier, it was confusing with

(a) a trademark that had been previously used in Canada or made known in

Canada by any other person;

(b) a trademark in respect of which an application for registration had been

previously filed in Canada by any other person; or

(c) a trade name that had been previously used in Canada by any other

person.

Previously the date on which the above determination was made was determined by the

nature of the grounds relied on for filing the application. If the application was based on

“use” or “making known”, the date would be the date of first use or making known. If the

application was based on foreign registration and use or proposed use, it was the filing

date of the application.

The change in the section raises concerns since the amendments also provide that an

applicant is no longer required to specify a date of first use. Claims relating to

entitlement were previously considered during examination, in opposition proceedings

or proceedings seeking to expunge a registration. It remains to be seen how such

claims can be effectively assessed in the absence of a requirement on the part of an

applicant to state a date of first use.

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Not to Limit any Art or Industry

Subsection 13(3) of the Trade-marks Act previously provided that the registration of a

distinguishing guise could be expunged by the Federal Court on the application of any

interested person if the court determined that the registration was likely to unreasonably

limit the development of any art or industry. No decided case made such a

determination.

Subsection 13(3) is repealed18 but the same restriction now applies to all registered

trademarks. Section 18.1 provides that the registration of a trademark may be

expunged by the Federal Court on the application of any person interested if the Court

decides that the registration is likely to unreasonably limit the development of any art or

industry. 19

Utilitarian Function

Section 12 of the Act has been amended to provide that “a trademark is not registrable

if, in relation to the goods or services in association with which it is used or proposed to

be used, its features are dictated primarily by a utilitarian function.”20 The concept of

“utilitarian function” is not defined. Presumably reference will be made to existing case

law relating to functionality as a bar to registration.21

Section 20 of the Act dealing with infringement is also amended to add the following

subsection:

18. The Amending Act, section 327 repealing section 13 of the Trademarks Act. 19. The Amending Act, section 331 adding section 18.1 to the Trademarks Act. 20. The Amending Act, subsection 326(4) replacing subsection 12(2) of the Trademarks Act. 21. See for example Remington Rand Corp. v. Philips Electronics N.V. (1995), 64 C.P.R. (3rd) 467, leave to appeal to the S.C.C. dismissed 67 C.P.R. (3rd) vi (S.C.C.); Thomas & Betts, Ltd. v. Panduit Corp., (2000), 4 C.P.R. (4th) 498 (F.C.A).

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(1.2) The registration of a trademark does not prevent a person from using any

utilitarian feature embodied in the trademark.22

This provision suggests that a trademark with a utilitarian feature embodied in it may be

registered so long as all of its features are not dictated primarily by a utilitarian function.

The Nice Classification System

The International Classification of Goods and Services for the Purposes of the

Registration of Marks was established by an Agreement concluded at the Nice

Diplomatic Conference, on June 15, 1957. It was revised at Stockholm in 1967 and at

Geneva in 1977, and was amended in 1979. The countries that are party to the

Agreement constitute a Special Union under Paris Union for the Protection of Industrial

Property. They have adopted and apply the Nice Classification for the purposes of the

registration of marks. Each country is obliged to apply the Nice Classification in

connection with the registration of trademarks and to include in the official documents

and publications relating to its registrations of trademarks the numbers of the classes of

the Classification to which the goods or services for which the marks are registered

belong.23

The following definition has been added to the Trademarks Act:

“Nice Classification” means the classification established by the Nice Agreement

Concerning the International Classification of Goods and Services for the

Purposes of the Registration of Marks, signed at Nice on June 15, 1957, including

any amendments, modifications and revisions made from time to time to which

Canada is a party; 24

22. The Amending Act, section 332 amending section 20. If Bill C-8 receives royal assent section 20 will be further amended. 23. The Wipo website at http://www.wipo.int/classifications/nice/en/about_the_ncl/preface.html 24. The Amending Act, subsection 318(5).

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In addition a number of consequential amendments have been made to the Trademarks

Act. First, section 6 of the Act dealing with confusion has been modified to clarify that

the fact that the relevant goods or services are not of the same general class or appear

in the same class of the Nice Classification is not determinative.25

Second, the information to be included on the register of trademarks will include:

the names of the goods or services in respect of which the trademark is registered,

grouped according to the classes of the Nice Classification, each group being

preceded by the number of the class of the Nice Classification to which that group

of goods or services belongs and presented in the order of the classes of the Nice

Classification; 26

Third, an application must group the goods and services in the same fashion as noted

above.27 The reference to “specific wares or services” in section 30(a) has been

amended to remove the word “specific” so that the requirements under the Act will be

more consistent with the requirements in other countries. 28 Any question arising as to

the class within which any goods or services are to be grouped shall be determined by

the Registrar, whose determination is not subject to appeal. 29

Fourth, applications that have been received by the Registrar before the day on which

that section 339 of the Amending Act comes into force, and that have not been

advertised must comply with the above requirement. 30 For applications that have been

advertised before the day on which section 342 of the Amending Act comes into force

the Registrar may require an applicant to amend the statement of goods or services to

comply. 31

25. The Amending Act, subsection 321(1). 26. The Amending Act, subsection 337 amending section 26(2) of the Trademarks Act.. 27. The Amending Act, subsection 339 replacing section 30 of the Trademarks Act.. 28. The Amending Act, subsection 339 replacing section 30 of the Trademarks Act. 29. The Amending Act, subsection 339 replacing section 30 of the Trademarks Act. 30. The Amending Act, subsection 359 adding section 69. 31. The Amending Act, subsection 359 adding section 70(3).

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Fifth, the Register may require that a registered owner of a trademark furnish the

Registrar, in the prescribed time and manner, with a statement of the goods or services

in respect of which the trademark is registered, in which those goods or services are

grouped in the manner described in subsection 30(3) of the Act. Thereafter the

Registrar may amend the register in accordance with the statement. If the statement is

not furnished, the Registrar shall by a further notice fix a reasonable time after which, if

the statement is not furnished, the Registrar may expunge the registration of the

trademark or refuse to renew it. 32

Sixth, while not specifically addressed in the Act, it is anticipated that there will be a

separate filing fee for each class of goods or services included in an application.

Applications

Section 30 of the Trademarks Act has been amended to read as follows:

30. (1) A person may file with the Registrar an application for the registration of a

trademark in respect of goods or services if they are using or propose to use, and

are entitled to use, the trademark in Canada in association with those goods or

services.

Contents of application

(2) The application shall contain

(a) a statement in ordinary commercial terms of the goods or services in

association with which the trademark is used or proposed to be used;

(b) in the case of a certification mark, particulars of the defined standard that

the use of the certification mark is intended to indicate and a statement that

the applicant is not engaged in the manufacture, sale, leasing or hiring of

goods or the performance of services such as those in association with which

the certification mark is used or proposed to be used;

32. The Amending Act, subsection 348 adding section 44.1.

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(c) a representation or description, or both, that permits the trademark to be

clearly defined and that complies with any prescribed requirements; and

(d) any prescribed information or statement. 33

In addition, as noted above an application must group the goods and services in in

accordance with the classes of the Nice Classification.

The scope of who may apply for a mark has been expanded. Section 2.1 of the Act

now provides that a reference to “person” in relation to a trademark, includes two or

more persons who, by agreement, do not have the right to use the trademark in Canada

except on behalf of both or all of them. 34

The filing date of an application for the registration of a trademark in Canada is the day

on which the Registrar has received all of the following:

(a) an explicit or implicit indication that the registration of the trademark is sought;

(b) information allowing the identity of the applicant to be established;

(c) information allowing the Registrar to contact the applicant;

(d) a representation or description of the trademark;

(e) a list of the goods or services for which registration of the trademark is sought;

(f) any prescribed fees.35

As noted above in the section concerning entitlement the failure to require an applicant

to specify a date of first use raises concerns with respect to determining entitlement.

33. The Amending Act, subsection 339 replacing section 30 of the Trademarks Act. 34. The Amending Act, subsection 320 adding section 2.1 to the Trademarks Act. 35. The Amending Act, subsection 339 replacing section 30 of the Trademarks Act.

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Claiming Convention Priority

Section 34 has been amended and the basic rules relating to making a claim remain

unchanged.36 However, because the reference to “country of origin” in subsection 16(2)

has been removed, an application and claim to priority can be based on a filing of an

application in any country of the Union other than Canada and is no longer restricted to

the applicant’s “home” country.

The section has also been amended to allow for the withdrawal of a claim of priority and

the prospect of extending the six month period by not more than seven days in an

appropriate case. New subsection 34(5) provides that:

(5) An applicant is not permitted to apply under section 47 for an extension of the

six-month period referred to in paragraph (1)(a) until that period has ended, and

the Registrar is not permitted to extend the period by more than seven days.37

Oppositions

The Trademarks Act has been amended to revise the first existing ground of opposition

to read as follows:

(a) that the application does not conform to the requirements of subsection

30(2),without taking into account if it meets the requirement in subsection

30(3). 38

The fact that an application may not comply with the Nice Classification is not a ground

of opposition.

In addition the following two grounds of opposition have been added:

36. The Amending Act, section 340 replacing section 34 of the Trademarks Act. 37. The Amending Act, section 340(3) adding subsections 34(4) and (5) to the Trademarks Act. 38. The Amending Act, subsection 343(1) replacing subsection 38(2)(a) of the Trademarks Act.

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(e) that, at the filing date of the application in Canada, the applicant was not using

and did not propose to use the trademark in Canada in association with the goods

or services specified in the application; or

(f) that, at the filing date of the application in Canada, the applicant was not entitled

to use the trademark in Canada in association with those goods or services. 39

These changes limit the scope of opposition proceedings since grounds of opposition

relating to the following matters that were required to be set out in an application will no

longer be available to an opponent:

a) in the case of a trademark that has been used in Canada, the date from which

the applicant or his named predecessors in title, if any, have so used the

trade-mark in association with each of the general classes of wares or services

described in the application;

b) in the case of a trademark that has not been used in Canada but is made

known in Canada, the name of a country of the Union in which it has been

used by the applicant or his named predecessors in title, if any, and the date

from and the manner in which the applicant or named predecessors in title

have made it known in Canada in association with each of the general classes

of wares or services described in the application;

c) for applications based on foreign registration and use if the trademark has

neither been used in Canada nor made known in Canada, the name of a

country in which the trademark has been used by the applicant or the

applicant’s named predecessor in title, if any, in association with each of the

general classes of wares or services described in the application; 39. The Amending Act, subsection 343(2) adding subsection 38(2)(e) and (f) to the Trademarks Act. Subsection 38(2)(f) is limited to claims concerning entitlement at the filing date of an application but subsection16(1) and existing subsection 38(2)(c) are not limited to this date. It remains to be seen why the subsection has been drafted in this fashion.

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As noted above in this paper concerning entitlement, the failure to require an applicant

to specify a date of first use raises concerns with respect to determining entitlement.

Presumably the default position will be that entitlement will be determined as of the filing

date of the application. But amended subsection 16(1) refers to the “the filing date of

the application or the date of first use of the trademark in Canada, whichever is earlier”.

However nothing has been said to date concerning when and how the applicant may

raise a claim based on use. This could be done in the counterstatement but this is not

consistent with new subsection 38(7).

Subsections 38(6) to (8) have been replaced by amended provisions to deal with a

number of issues including: an express right to strike all or part of a statement of

opposition; direction concerning the content of a counterstatement; and the right of a

hearing officer to make a split decision allowing an application for some goods or

services and concurrently maintaining the opposition for the balance of the goods or

services. The amended subsections are as follows:

(6) At the applicant’s request, the Registrar may — at any time before the day on

which the applicant files a counter statement — strike all or part of the statement of

opposition if the statement or part of it

(a) is not based on any of the grounds set out in subsection (2); or

(b) does not set out a ground of opposition in sufficient detail to enable the

applicant to reply to it.

(7) The applicant shall file a counter statement with the Registrar and serve a copy

on the opponent in the prescribed manner and within the prescribed time after a

copy of the statement of opposition has been forwarded to the applicant. The

counter statement need only state that the applicant intends to respond to the

opposition.

(12) After considering the evidence and representations of the opponent and the

applicant, the Registrar shall refuse the application, reject the opposition, or refuse

the application with respect to one or more of the goods or services specified in it

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and reject the opposition with respect to the others. He or she shall notify the

parties of the decision and the reasons for it.40

While new subsection 38(7) may avoid technical problems relating to failing to plead to

all of the grounds for opposition, it does not address the existence of an applicant’s

claim to an earlier date of first use.

Divisional Applications

The amendments make provision for dividing an application into two or more

applications. This can be particularly useful where the characteristics of some goods or

services raise an issue but the balance of the goods or services do not. New section 39

is as follows:

39. (1) After having filed an application for the registration of a trademark, an

applicant may limit the original application to one or more of the goods or services

that were within its scope and file a divisional application for the registration of the

same trademark in association with any other goods or services that were

(a) within the scope of the original application on its filing date; and

(b) within the scope of the original application as advertised, if the divisional

application is filed on or after the day on which the application is advertised

under subsection 37(1).

(2) A divisional application shall indicate that it is a divisional application and shall,

in the prescribed manner, identify the corresponding original application.

(3) A divisional application is a separate application, including with respect to the

payment of any fees.

(4) A divisional application’s filing date is deemed to be the original application’s

filing date.

(5) A divisional application may itself be divided under subsection (1), in which

case this section applies as if that divisional application were an original

application.41

40. The Amending Act, section 343(3) replacing subsections 38(6) to (8) of the Trademarks Act.

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Section 41(1) has been amended to allow the Registrar to “subject to the regulations,

merge registrations of the trademark that stem, under section 39, from the same original

application”.42

No More Declarations of Use

Section 40 of the Act has been amended to remove any requirement to file a declaration

of use. Section 40 reads as follows:

When an application for the registration of a trademark either has not been

opposed and the time for the filing of a statement of opposition has expired, or has

been opposed and the opposition has been decided in favour of the applicant, the

Registrar shall register the trademark in the name of the applicant and issue a

certificate of its registration or, if an appeal is taken, shall act in accordance with

the final judgment given in the appeal. 43

The transitional provisions provide as follows:

71. For greater certainty, an applicant is not required to submit a declaration of use

referred to in subsection 40(2), as that subsection read immediately before the day

on which section 345 of the Economic Action Plan 2014 Act, No. 1 comes into

force, in order for the Registrar to register the trademark and issue a certificate of

registration. 44

72. Any matter arising on or after the day on which section 345 of the Economic

Action Plan 2014 Act, No. 1 comes into force, in respect of a trademark registered

on or after that day on the basis of an application filed before that day, shall be

dealt with and disposed of in accordance with the provisions of this Act.

Allowing an application filed on the basis of proposed use without requiring at least a

statement that the mark has been used raises concerns with respect to the quality of the

41. The Amending Act, section 344 adding section 39 to the Trademarks Act. 42. The Amending Act, section 346 adding paragraph 41(1)(f) to the Trademarks Act. 43. The Amending Act, section 345 replacing section 40 of the Trademarks Act. 44. The Amending Act, section 359 replacing section 69 of the Trademarks Act.

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information appearing on the Trademark register. It will be possible to obtain a

registration without ever using the trademark.

As a result of this change, a notice of allowance will no longer be issued and unless an

application is opposed, a certificate of registration will be issued.

Correction of Errors

The Register may withdraw the advertisement of an application if the Register is

satisfied that the application should not have been advertised or was incorrectly

advertised and the Registrar considers it reasonable to do so.45 In addition, the

Registrar may, within three months after the registration of a trademark, remove the

registration from the register if the Registrar registered the trademark without

considering a previously filed request for an extension of time to file a statement of

opposition. 46

A registered owner of a trademark may apply to the Register to amend the register to

correct any error or enter any change in the name, address or description of the

registered owner.47

The Register is given jurisdiction to correct obvious errors. New subsection 41(3) is as

follows:

(3) The Registrar may, within six months after an entry in the register is made,

correct any error in the entry that is obvious from the documents relating to the

45. The Amending Act, section 342(3) amending subsection 37 of the Trademarks Act by adding subsection (4). 46. The Amending Act, section 342(1) amending subsection 41 of the Trademarks Act by adding subsection (4). 47. The Amending Act, section 342(1) amending subsection 41 of the Trademarks Act.

21

registered trademark in question that are, at the time that the entry is made, on file

in the Registrar’s office.48

This is a helpful amendment since the Registrar previously refused to fix errors on the

basis that there was no jurisdiction to do so. However there is, in effect, a six month

limitation period to request that the change be made.

Associated Trademarks

The Act has been amended to remove the reference to associated trademarks and the

limitations relating to their transfer previously set out in section 15 of the Act.49 It will be

up to trademark owners to ensure that assignment of a trademark does not negatively

impact the distinctiveness of their trademarks.

Section 45

The section will be amended to allow the request to be limited to the specific goods or

services specified in the notice.50 In addition the ability to grant extensions is clarified.51

Previously the Registrar, at its own initiative, could commence a proceeding under the

section at any time. Under the amended section the Registrar must wait for three years.

The Transfer of Trademarks

Subsection 48(3) of the Act provides for the registration of the transfers of registered

trademarks. The Act has been amended to allow a transfer by the registered owner

48. The Amending Act, section 346(3) amending subsection 41 of the Trademarks Act by adding subsection (3). 49. The Amending Act, section 328 replacing section 15 of the Trademarks Act. 50. The Amending Act, section 349 replacing section 45(1) of the Trademarks Act 51. The Amending Act, section 351 adding section 47.1 to the Trademarks Act

22

without requiring any evidence of the transfer and to deal with the removal of the

registration of a transfer that should not have been registered.52

The Term of Protection

The Act has been amended to reduce the term of protection from fifteen years to ten

years and to make it possible to apply for an extension of not more than seven days of

the prescribed renewal period after it has expired. This change is requires to comply

with the Singapore Treaty on the Law of Trademarks. The amended section is as

follows:

46. (1) Subject to any other provision of this Act, the registration of a trademark is

on the register for an initial period of 10 years beginning on the day of the

registration and for subsequent renewal periods of 10 years if, for each renewal,

the prescribed renewal fee is paid within the prescribed period.

(2) If the initial period or a renewal period expires and the prescribed renewal fee

has not been paid, the Registrar shall send a notice to the registered owner stating

that if the fee is not paid within the prescribed period, the registration will be

expunged.

(3) If the prescribed renewal fee is not paid within the prescribed period, the

Registrar shall expunge the registration. The registration is deemed to have been

expunged at the expiry of the initial period or the last renewal period.

(4) If the prescribed renewal fee is paid within the prescribed period, the renewal

period begins at the expiry of the initial period or the last renewal period.

(5) A registered owner is not permitted to apply under section 47 for an extension

of the prescribed period until that period has expired, and the Registrar is not

permitted to extend the period by more than seven days.

(6) For the purposes of this section, the prescribed period begins at least six

months before the expiry of the initial period or the renewal period and ends no

earlier than six months after the expiry of that period.53

52. The Amending Act, section 352 replacing section 48(3) of the Trademarks Act 53. The Amending Act, section 350 replacing section 46 of the Trademarks Act.

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The transitional provisions provide that the fifteen year period continues to apply to a

registration that is on the register on the day before the day on which the new amended

section comes into force until the registration is renewed.54

Regulations

The power of the Governor in Council to make regulations for carrying into effect the

purposes and provisions of the Trademarks Act is expanded to include regulations:

(c) respecting the manner in which the goods or services referred to in paragraph

30(2)(a) are to be described;

(d) respecting the merger of registrations under paragraph 41(1)(f), including, for

the purpose of renewal under section 46, the deemed day of registration or last

renewal;

(i) respecting proceedings under sections 38 and 45, including documents relating

to those proceedings;

(k) respecting the provision of documents and information to the Registrar,

including the time at which they are deemed to be received by the Registrar; 55

(l) respecting correspondence between the Registrar and any other person;

(m) respecting the grouping of goods or services according to the classes of the

Nice Classification and the numbering of those classes; and

(n) prescribing anything that by this Act is to be prescribed.56 54. The Amending Act, section 359 replacing section 69 of the Trademarks Act and adding subsection 73(4). 55. The Amending Act, section 356 replacing section 64 of the Trademarks Act provides that subject to the regulations, any document, information or fee that is provided to the Registrar under this Act may be provided in any electronic form, and by any electronic means, that is specified by the Registrar.

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In addition section 65.1 has been added to the Trademarks Act which provides that:

65.1 The Governor in Council may make regulations for carrying into effect

(a) despite anything in this Act, the Protocol Relating to the Madrid Agreement

Concerning the International Registration of Marks, adopted at Madrid on June 27,

1989, including any amendments, modifications and revisions made from time to

time to which Canada is a party; and

(b) the Singapore Treaty on the Law of Trademarks, done at Singapore on March

27, 2006, including any amendments and revisions made from time to time to

which Canada is a party. 57

© John McKeown

Goldman Sloan Nash & Haber LLP

480 University Avenue, Suite 1600

Toronto, Ontario M5G 1V2

Direct Line: (416) 597-3371

Fax: (416) 597-3370

Email: [email protected]

56. The Amending Act, section 357 replacing section 65 of the Trademarks Act. 57. The Amending Act, section 35 adding section 65.1 to the Trademarks Act.

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