Last week, the federal government introduced significant changes to the Trade-marks Act by tabling the omnibus budget bill, Bill C-31, the Economic Action Plan 2014 Act, No. 1 on March 28, 2014. The “monster” Bill makes changes to nearly forty different pieces of legislation, and is designed to enact measures in last month’s federal budget. The trademark amendments will allow Canada to meet its international treaty obligations (including the Nice Agreement, Singapore Treaty, and the Madrid Protocol). According to the government summary, the proposed changes make the Trade-marks Act consistent with the Singapore Treaty, add authority to carry the Madrid Protocol into effect, and simplify the trademark application filing requirements.
The full text of Bill C-31 is available (link) from the Parliament of Canada’s website.
Key trademark changes proposed by the Bill include,
- Canada will adopt the Nice classification system– the definitions in section 2 of the Trade-marks Act will include Nice classification, and trademark applications are to group the goods or services according to the classes of the Nice classification.
- The definition of a “trademark” now expressly includes non-traditional marks: the definition of “trade-mark” was amended to include a “sign” or a combination of signs”, which are defined to include, among other things, a 3D 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.
- Trademark filing grounds are simplified: Section 30 of the Act will be amended to allow applicants to file a trademark application without providing a date of first use in Canada or details of any use or registration abroad.
- Registration term is now 10 years: the term for registration of a trademark will be reduced from 15 years to 10 years.
- Divisional applications will be permitted: this will allow applicants to get a fast registration for those goods/services in which the application can claim use, while maintaining the rest of the application for those goods/services based on proposed use.
- Utilitarian function would be introduced as a limit on registrability of all trademarks in section 12 and as an exception in section 20.
- Removing the term “distinguishing guise” from the act and allowing three-dimensional marks, provided that they have acquired the requisite distinctiveness
- No requirement to file a declaration of use in Canada prior to registration.
- Miscellaneous: We are finally losing the hyphen from “trade-marks”, and the term “wares” is being repealed and being replaced with “goods”, similar to the U.S.
These amendments are only just published and so will likely be changed as the Bill works its way through the House of Commons and Senate. Although most of the proposed amendments were expected, trademark practitioners will need to be aware of the changes as they will affect the nature and scope of protection.
[This is a guest post by Sangeetha Punniyamoorthy, also of Dimock Stratton LLP.]