Bill C-31 Receives Royal Assent

Bill C-31 received Royal Assent on June 19, 2014.  Bill C-31 contains the most significant changes to the Trade-marks Act in the last 50 years.  Before implementation, the government will need to enact regulations on the new procedures for applications filed under the Madrid Protocol, as well as the implementation of new filing fees.  Canada may adopt a system in which fees will be set by class.  Until such regulations are implemented, the Bill will not come into force.  It is expected that full implementation will not take place until mid-2015.  As noted in our previous post, Bill C-31 includes significant changes to Canada’s trade-mark system.  Included below are some of the key changes:

  • Filing grounds will no longer be required in the application. This means that it will no longer be necessary to state whether the trade-mark has been used in Canada or abroad, or whether the application is being filed on the basis of Proposed Use.  Moreover, a Declaration of Use will not longer be required in order to proceed to registration.  These changes will align Canada with a first-to-file system, although first use will still be relevant in opposition proceedings.
  • The Nice Classification system will be implemented which means that goods and services will need to be designated by class.  The requirement to define goods in ordinary commercial terms has not been eliminated.  Existing registrations will also be subject to the classification requirement.  The Registrar is entitled to request that existing registrants submit class details for the goods and services claimed in the registration.  Failure to do so could lead to expungement.  Morevoer, the Registrar will have the final say on classification issues.
  • The term of registration will be reduced from 15 years to 10 years.
  • Priority claims may be made for any original application, and not only those filed in the applicant’s country of origin.
  • Divisional applications will now be permitted.

We will continue to monitor the progress of Bill C-31.  Big changes lie ahead for brand owners!

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