With the start of 2018, the countdown to the implementation of Canada's new trademark law has begun in earnest. While the changes will have benefits, there will also be some new challenges. However, a number of key strategies can be employed now in order to obtain maximum benefit from the existing legal landscape for trademarks in Canada and prepare brand owners for the new law.
The text of the Comprehensive Economic and Trade Agreement (CETA) between Canada and Europe was recently released. Chapter 22 addresses intellectual property, stating that CETA's objectives are to facilitate the production and commercialisation of innovative and creative products and the provision of services, and to achieve an adequate and effective level of protection and enforcement of IP rights.
The government has introduced the Economic Action Plan 2014 Act, 1 as part of an omnibus budget implementation bill. The bill includes significant amendments to the Trademarks Act that are designed to put Canada in a position to adhere to major international trademark treaties, including the Madrid Protocol, the Nice Agreement and the Singapore Treaty.
The Canadian government recently tabled a report with further details concerning the Comprehensive Economic and Trade Agreement (CETA) between Canada and the European Union. CETA's provisions relating to intellectual property will, among other things, affect an innovator's right of appeal and extend the protection available to pharmaceutical products protected by eligible patents.
Non-Canadians may obtain a trademark registration in Canada based on a corresponding registration in the country of origin. However, such applicants should be aware that the registration in the country of origin must be accompanied by use. As this update reveals, several details of this basis for registration in Canada remain undetermined or unclear under Canadian law.
New rules and procedures governing opposition proceedings recently came into effect. The changes relate to numerous administrative matters including the naming of joint opponents, the permitted methods for serving documents, the conduct of cross-examinations and the time limits for carrying out steps throughout the course of an opposition.
Canada may consider expanding the boundaries for the protection of colour, following the lead of other jurisdictions such as the United States, the European Union and Australia, all of which allow registration for colour per se. However, the law currently dictates that in order to secure registration for colour, the colour must be tied to other substantive features such as size or shape.