The new trademark law will take effect on 17 June 2019. Among the changes is a new fee-per-class structure, under which the government renewal fee will be C$400 for the first class and C$125 for each additional class. Brand owners can potentially realise huge savings if they take steps to renew all of their existing Canadian trademark registrations before the new law takes effect.
Canadian trademark law will be overhauled on 17 June 2019, with many significant changes – both procedural and substantive – coming into effect. This article discusses the important strategies to consider before these changes take effect, including tips that could save time and money now and in future.
After years of uncertainty, a date has been set for the implementation of Canada's new trademark law, which will come into force on 17 June 2019. The law will bring about significant changes, including the simplification of trademark applications, the elimination of the government registration fee for new applications and the introduction of fees per class.
Although the new trademark law was finalised in 2014, it has yet to come into force. Before it can be implemented, the government must finalise new trademarks regulations and the Trademarks Office's IT system must be modified to accommodate the changes to the law. Once implemented, the changes will be the most significant in 50 years – both procedurally and substantively.
In Canada, trademarks for pharmaceutical preparations and related products have faced numerous challenges, some of which are unique to the industry. In addition, a number of important changes and new opportunities will be introduced by upcoming amendments to the trademark law, which are expected to come into force in 2019.
While the new Trademarks Act and Industrial Design Act have been finalised, the Trademarks Regulations and the Industrial Design Regulations have not. The Canadian Intellectual Property Office recently released the first draft of the new regulations, which provide considerable detail outlining how Canada will adhere to the Madrid Protocol, the Nice Agreement and the Hague Agreement.
Canada will be significantly changing its trademark law. The anticipated date for the implementation of the new law has been postponed many times by the Canadian government. The most recent forecast from the government, which seems to have been provided with more confidence than previous forecasts, is that the new law is expected to come into force in early 2019.
In a recent decision involving President-elect Donald Trump, the Ontario Superior Court of Justice held that the egregious negligence of a licensee did not provide a basis in law for imposing liability on a licensor. Because proper trademark licensing in Canada requires control by the licensor, this decision raises an interesting question as to the obligations of trademark licensors in Canada.
Official marks, which are a form of IP protection unique to Canada, can be a source of frustration when cited against a trademark application. However, applicants have several options available to them to overcome a citation of an official mark. Recently, a Federal Court decision involving Starbucks clarified that, under certain circumstances, an official mark may be invalidated.
The US Court of Appeals for the Federal Circuit recently held that the bar on registration of "disparaging" marks under Section 2(a) of the Lanham Act is unconstitutional and violates the First Amendment. Canada has a similar prohibition against the adoption of "scandalous, obscene or immoral" marks; so how might Canadian courts respond to arguments that the prohibition against such offensive marks is unlawful?
Previously, the Canadian Trademarks Office informally indicated that it was considering changing its practice such that if a letter of consent was filed, the citation of a previously filed application or registration would be withdrawn. However, it has now advised that it is no longer considering a change in practice. The Trademarks Office will continue to have discretion to maintain citations despite the filing of any letters of consent.
The International Trademark Association (INTA) has been granted leave by the Quebec Superior Court to intervene in a declaratory judgment proceeding pertaining to the interplay between Quebec's Charter of the French Language and trademarks.
Canadian courts and the Canadian Trademarks Office have struggled with appropriate wording in a trademark application where the mark consists of one or more colours as applied to an object. That said, both the courts and the Trademarks Office have agreed that colour per se is not registrable. In other words, the colour(s) must be limited to an object of a particular shape as shown in the trademark application.
The Trademarks Opposition Board rules on trademark opposition proceedings at first instance, and its decisions may be appealed to the Federal Court of Canada. Somewhat unusually, in appeals both parties are permitted to file new evidence in addition to that which they filed at first instance. However, a recent case illustrates the necessity of filing the best possible evidence before the board.
The Combating Counterfeit Products Act addresses Canada's lack of an effective regime for tackling counterfeit goods by proposing trademark prohibitions and offences and new customs measures for detaining counterfeits. However, significant improvements could be made. It remains to be seen whether there will be robust debate, appropriate amendment and passage of the bill into law.
A recent Federal Court case concluded that for a Canadian trademark application to be based on use and registration (or application) abroad, both the use and the foreign application or registration must exist as of the Canadian filing date. While this case highlights the potential vulnerability of an application in an opposition in these circumstances, the impact on existing registrations is especially unclear.
The Trademarks Office has proposed amendments to the Trademarks Regulations that are likely to have a substantive impact beyond purely procedural changes. Among other things, the proposals would allow for the filing of applications to register sound marks, as well as holograms and motion marks, and would change the rules on written arguments, cross-examinations and electronic service in oppositions.
The Trademarks Office recently issued a practice notice indicating that sound marks are now registrable in Canada. The Trademarks Office had previously refused to register sound marks on the basis that a sound is not visual and therefore does not fall within the definition of a 'trademark' under Section 2 of the Trademarks Act. This change in practice resulted from a recent court order issued on consent.
The Trademark Opposition Board recently published a new practice notice that will significantly modify the granting of time extensions in trademark oppositions. The stringent language of the new practice notice suggests that the board will be reluctant to grant time extensions beyond the specified benchmarks and cooling-off periods.
The Canadian Supreme Court recently ruled that trademark law cannot be applied to prevent competitors from selling toy building blocks that look like the basic LEGO blocks. Kirkbi, the Danish manufacturer of LEGO toys, had previously obtained patent protection relating to its blocks, and the court suggested that there is a presumption that the features claimed in a patent are purely functional.
The Trademarks Office has solicited comments from the Canadian trademark profession and other interested parties on revising and modernizing the Trademarks Act. The consultation looks at whether Canada should adhere to the Trademark Law Treaty and the Madrid Protocol.
The Canadian Copyright Board has helped to clarify the definition of the term 'audio recording medium' in the context of the private copying exemption. The board held that blank CDs are covered, but blank DVDs are not. The Canadian Recording Industry Association will have to consider the implications of this decision before formulating any litigation strategy against individual file sharers.