Canada's trademarks profession had an exciting 2018. The long-awaited changes to the Trademarks Act were announced, many of which will bring Canada into line with the rest of the world. In addition, further unexpected legislative developments were announced in 2018, which will significantly affect trademark protection.(1)
This article provides a summary of highlights from 2018.
New trademark law and regulations
The Canadian government finally set a date for the implementation of Bill C-31, which will overhaul Canadian trademark law. In November 2018 the federal government announced that the bill's long awaited coming-into-force date will be 17 June 2019 (for further details please see "The date is set – new trademark law will be in force June 2019"). It also published the new Trademarks Regulations, which include key amendments such as:
- the elimination of filing grounds and declarations of use;
- the expansion of protection for non-traditional marks (ie, colour per se, taste, scent, texture, holograms and moving images);
- a shortened renewal term (ie, from 15 to 10 years); and
- an accession to the Madrid Protocol, Nice Agreement and the Singapore Treaty on the Law of Trademarks.
(For further details please see "Significant change for non-Canadian brand owners under new Trademarks Act".)
Each year, the federal government enacts one or two omnibus acts, implementing provisions of the federal budget tabled in Parliament in the spring. The second budget bill of 2018, enacted as the Budget Implementation Act 2 2018, received royal assent on 13 December 2018. It amends dozens of federal laws and includes several important trademark-related provisions, including:
- the addition of a bad faith ground of opposition;
- requiring the use of a registered trademark from obtaining relief in a proceeding alleging infringement or depreciation of goodwill during the first three years after registration;
- clarifying the prohibitions against the use of official marks which have been adopted by public authorities;
- allowing the registrar to grant confidentially orders, cost awards and provide case management deadlines; and
- requiring leave to file evidence on an appeal of a registrar's decision to the Federal Court.
(For further details please see "New Bill C-86 introduces many more changes to IP laws".)
Canada also reached a new free-trade agreement with Mexico and the United States that replaces the former North American Free Trade Agreement (NAFTA). It is known as the United States-Mexico-Canada Agreement (USMCA) stateside or the Canada-United States-Mexico Agreement north of the border. In relation to the USMCA's trademark-related provisions, Canada largely complies with these provisions, or will do so once the amendments to Canada's Trademarks Act come into force. For instance, the USMCA requires that Canada must:
- ratify or accede to the Madrid Protocol and the Singapore treaty;
- adopt a trademark classification system consistent with the Nice Classification system; and
- not deny registration to scent marks.
All of these changes are already underway and will come into force on 17 June 2019 (for further details please see "USMCA versus NAFTA: what's changed and what it means for intellectual property in Canada").
The implementation of Bill C-31 is eagerly awaited, as are the many new opportunities it will bring for brand owners to protect their trademarks, including through international applications or registrations, and the expansion of non-traditional trademarks to include colour per se, scent, taste, texture, sound, moving images and holograms.
Endnotes
(1) A separate summary of notable trademark decisions from the Canadian courts in 2018 is available here.
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