The Canadian government has tabled the Economic Action Plan 2014 Act, No.1 (Bill C-31) to bring Canada’s trademark laws in line with the Madrid Protocol, the Nice Agreement and the Singapore Treaty. Among the proposals included in the Bill are:
- the introduction of the classification system for goods and services established by the Nice Agreement;
- the expansion of the definition of “trademarks” to cover a “sign or combination of signs” including 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.
- the elimination of prior use information required upon filing (specifically, it will no longer be necessary to identify a date of first use in Canada, or details of use and registration of the mark abroad);
- the elimination of the requirement to file a Declaration of Use in order to register a trade-mark;
- the introduction of divisional applications;
- the reduction of the term of registration from 15 years to 10 years;
- the elimination of “distinguishing guises” from Canadian practice.
As reported in our earlier post, Canada has tabled a series of international IP treaties for ratification and implementation by Parliament. The amendments proposed in Bill C-31 go hand-in-hand with the implementation of these IP treaties.
The aim of Bill C-31 is to harmonize Canada’s trademark laws with those of the international community. Accession to the Madrid Protocol will permit Canadians to access the international registration system.
The Madrid Protocol provides for a centralized filing system that would permit Canadian trademark owners to register their rights in multiple jurisdictions by filing a single application with CIPO, for a single fee and in a single language (English or French). The immediate benefit to trademark owners is cost savings since a single application is easier and cheaper to file, prosecute and maintain. The drawback of the international system for Canadians is that since CIPO requires a more restrictive description of goods and services than other jurisdictions, Canadians filing in other jurisdictions Madrid may have a more limited scope of registration than if they had filed directly in the Trade-marks Office of the foreign country. Furthermore, international registrations are vulnerable to central attack, which means that if the Canadian application is rejected, cancelled or successfully opposed, this could result a loss of rights in other jurisdictions.
The impact of these changes on Canadian Trade-mark law and practice will be significant. We will continue to monitor the progress of Bill C-31.