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22 | LEXPERT • December 2014 | www.lexpert.ca TRADEMARKS apply only in the parts of Canada where it is established. Despite the broadening of the defi nition, Wilson says he does not expect to see a fl ood of applications to register non-traditional marks. " ey're just not really that common." Disputes over non-traditional trademarks will involve signifi - cant uncertainty. For example, how will the TMOB or a court determine whether one texture is confusing with another? Is a product's taste designed to make it more appealing – and there- fore ineligible for protection as a trademark? " e courts have recognized we don't want people to get functional protection for what otherwise is supposed to be a brand," says Cameron. > Goods and services descriptions in trademark applications will have to conform with the international Nice classifi cation system. is will primarily aff ect medium-size businesses whose goods or services span more than one class of goods. Depending on the regulations that are eventually adopted, those businesses could see an increase in the cost of registration, says Wilson. "For very large businesses, they're already involved in the Nice classifi cation system for their multinational registrations and they'll probably see a cost saving as a result of the streamlining of their work." Canada currently has no requirement to classify goods and services according to any system. However, the Canadian Trade- marks Offi ce requires descriptions "in ordinary commercial terms" — more specifi c descriptions than most countries. It is expected that Nice classifi cation will eventually be required for all existing applications and registrations. In addition, the strict Canadian description requirements are likely to remain, at least initially, a er the changes are implemented. Organizations such as the Canadian Chamber of Commerce and the Canadian Bar Association have criticized both the content and the lack of consultation preceding C-31, and some IP practitioners anticipate a challenge to the law's constitutionality. "It may be infringing on the constitutional powers of the provinces," says Andrew Shaughnessy, IP litigation partner at Torys LLP in Toronto. "When you have a system that's no longer based on use under the Trade-marks Act, which is what you need in order to nourish the federal power [to regulate trade and commerce], arguably you're in the domain of property and civil rights, and that's the domain of the provinces and not the feds." Other pending federal legislation with important ramifi ca- tions for trademarks is Bill C-8, the Combating Counterfeit Products Act, which is in the parliamentary pipeline. C-8 will facilitate much stronger border enforcement against the entry of counterfeit goods into Canada. "We haven't had the tools to compete on the international stage against counterfeiters," says Wilson. "C-8 creates new criminal off enses. It looks at commercial scale of the Canadian importa- tion of counterfeit products. It looks at putting in place a proper border enforcement regime. And that's pure trademark change." is year has seen signifi cant developments in trademark case law, too. Consider the Federal Court of Canada ruling in Ottawa Athletic Club Inc. v. Athletic Club Group Inc. In this dispute between two competing Ottawa gyms, the older OAC challenged Steven Garland, IP litigation partner at Smart & Biggar/Fether- stonhaugh in Ottawa. " e squatters would presumably set their price point suffi ciently low that it's more attractive to buy [the trademark] off of them than to take them to court." Registrants, besides no longer having to provide a date of fi rst use in Canada, also won't have to include details of use or registra- tion abroad. is, too, will make it harder (and costlier) for other trademark owners to determine the potential impact of new applications and assess whether or not to oppose them. Canada currently has oppositions to 2 to 3 per cent of all trade- mark applications. But the head of the Trademarks Opposition Board (TMOB) estimates that the C-31 changes will probably increase oppositions to 7 or 8 per cent. Currently, an opposition proceeding takes about four years (including 2½ years of pleadings, evidence, cross-examination and writing briefs). "If they have two to four times as many oppositions, what on earth is going to happen to that time line?" asks Donald Cameron, IP litigation partner at Bereskin & Parr LLP in Toronto. He also foresees more appeals of Opposition Board rulings to the Federal Court. Other signifi cant changes contained in C-31 include: > e term of trademark registration is shortened from 15 years (renewable) to 10 years (renewable). > e defi nition of "trademark" is broadened beyond words and pictures. It will include a personal name, a color, a three-dimen- sional shape, a hologram, a moving image, a mode of packaging, a sound, a scent, a taste, and a texture. Evidence of acquired distinctiveness was previously not required to register some of these non-traditional trademarks (e.g. textures, tastes and scents) but now will be. Acquired distinctiveness is established through affi davit and survey evidence, which can be expensive. However, if distinctive- ness is not established throughout Canada, a registration may Judith Robinson > Norton Rose Fulbright Canada LLP "[UNDER C-31] we will move to a system where registration can be obtained without use. The modifications shift the burden largely to the business owners to police these issues."

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