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Bill C-31 and Changes to Canadian Trademark Practice

Create Time 2018-10-24 01:10    Views:1301

Canada trademark registration

As mentioned in our last article, there are a number of changes to the Canadian trademark landscape that will be in play once Bill C-31 comes into force. Our last article focused on the changes relating to: (1) an expanded definition of trademark, (2) the removal of "use" as a requirement for registration, (3) compliance with the Nice Agreement, and (4) changes to the fee structure. There are several other changes to the Trade-marks Act (TMA) associated with Bill C-31 aimed at simplifying aspects of trademark registration and enforcement. In this article, we take a closer look at the changes relating to prosecution and post registration.

Canada trademark prosecution

Some of the forthcoming changes to the Canadian trademark landscape are aimed at simplifying record keeping and aspects of the opposition process. The proposed changes would provide applicants with more flexibility in the application process. For instance, the changes will allow for applications to be amended in order to correct an error in the identification of the applicants. Notably, however, an applicant will only be able to amend an application if the trademark substantially remains the same (for instance, changing a word mark to a sound mark will not be permitted). The scope of who may apply for a trademark has also been expanded by allowing two or more entities to apply for a single trademark.


Another change is that a current trademark applicant or owner may register an assignment of a trademark without being required to furnish evidence. Currently, evidence (such as an assignment document) is required before such transactions are recorded.


With the aim of addressing inefficiencies, the new law will make changes regarding electronic correspondence. Currently, electronic correspondence received on a day the Canadian Intellectual Property Office (CIPO) is closed is deemed received on the next business day. The new provisions will allow for electronic correspondence to be deemed received on the day on which CIPO receives it.


The proposed regulations associated with the new TMA will allow for the Registrar to waive the payment of a fee under certain circumstances. Generally, this will be reserved for when additional fees are associated with an error or action by the Registrar. The proposed regulations will also allow for the refund of overpayments, provided a refund request is made within three years.


Interestingly, an applicant will be permitted to divide their application (with the filing date retained) without additional filing fees. Currently, applications that encounter registrability issues with respect to some of its goods or services during examination are completely halted until such issues are resolved. The new regime will allow applicants to isolate contentious aspects of their application and continue the application process in respect of certain goods and services. The upcoming changes will also allow for the merger of applications that have been divided. Favourably, this change will allow applicants to file more broadly, as an applicant can obtain registration for some goods or services even if others are challenged.


One of the challenges of the forthcoming changes to the Canadian trademark landscape is that applications will be examined for distinctiveness. Currently, an examiner's search of a pending application is limited to confusingly similar trademarks and a general search for assessing descriptiveness. Under the new regime, however, an examiner will be required to search for inherent distinctiveness. Further, an applicant will be required to submit evidence of distinctiveness when: (1) the application is for a non-traditional marks (such as a colour, 3D, sound, scent mark) and (2) an examiner makes a preliminary objection that the trademark is not inherently distinctive. As a result, this forthcoming change will likely increase the cost of the application process for some applicants.


With respect to registrations based on acquired distinctiveness under Section 12(2) of the TMA, use will continue to be a factor that will be considered for showing acquired distinctiveness. However, Section 14 of the TMA will be repealed, which currently allows for acquired distinctiveness based on foreign registration. Practically, this means that foreign brand owners, like Canadian brand owners, wishing to register their mark will have to file evidence that the mark has actually become "distinctive", rather than merely that the mark is "not without distinctive character".


The changes also provide that a trademark will not be registrable if, in relation to its goods or services, its features are dictated primarily by a utilitarian function. This doctrine stipulates that a trademark will be unregistrable if it is primarily functional. Currently, the utilitarian doctrine is a requirement applied only to distinguishing guises. With the upcoming changes, the doctrine of utilitarian function will be expanded to apply to all trademarks. Another ground for cancellation under the new TMA will be trademark registrations that are likely to unreasonably limit the development of an art or an industry.


The regulations also provide for "Letters of Protest" that will allow a third party to formally contact CIPO to object to pending applications during prosecution. Namely, third parties will be allowed to bring to the Examiner's attention evidence important to the registrability of a pending trademark application. This allows brand owners to take proactive measures to raise objections even before advertisement.


As mentioned in our previous article, use has been removed as a requirement for registration. Additionally, the definition of a "certification mark" has been updated to allow applicants to apply for a certification mark before it is in use. Nevertheless, challenges based on non-use pursuant to Section 45 of the TMA will continue.

Canadian trademark registration renewal

The term of registration will be shortened from 15 years to 10 years from the date of issuance of registration. This will result in increased fees to registered trademark owners, as applicants will be required to renew their registrations more frequently. Accordingly, registered trademark owners should review their registrations with a view to taking advantage of the 15 year term before the amendments take effect.


Once the new act comes into force, all applications that have not been advertised prior to the coming into force date (including those filed but not examined and pending trademark applications subject to an outstanding Examiner's Report) will be subject to most of the provisions of the new regime.


Conclusion


In summary, as outlined in this present article and our last article, there are a basket of changes expected to Canadian trademark practice. Some of these changes include:


  1. the elimination of the need to file certified copies and Declarations of Use

  2. the removal of the "use" requirement for registration

  3. added provisions regarding distinctiveness

  4. the removal of Section 14 claims

  5. the advancement of applications for certification marks filed on proposed use

  6. the examination as to whether pending trademarks are primarily functional

  7. compliance with the Nice Agreement

  8. the new fee structure

  9. the reduced term of 10 years


In light of these changes, brand owners should maintain records of use for their trademarks and review their trademark portfolios now. Brand owners should consider renewing their registered marks or filing new applications now to take advantage of the current favourable structures (such as avoiding requirements to file evidence of distinctiveness). For more information on making the most of your trademark portfolio, contact our experts today.


Disclaimer:  This website is not intended to offer legal advice or to be a substitute for a consultation on a case by case basis with an attorney.  The information provided above is meant for informational purposes only and may be subject to change. 

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