20 | LEXPERT • December 2014 | www.lexpert.ca
TRADEMARKS
PHOTO:
SHUTTERSTOCK
IN TRADEMARK LAW
THE YEAR 2015 will see a dramatic alteration in Canada's trademark landscape, with
perhaps the most signifi cant changes to the trademark regime since 1868. e federal government
has adopted amendments to the Trade-marks Act through an omnibus Budget Implementation Bill
(Bill C-31, Economic Action Plan 2014 Act, No. 1). e legislation will take eff ect following a public
consultation on application fees, which suggests its implementation will not be until next year.
"I would expect we're looking at less certainty, less predictability, and that usually points to
more litigation and more oppositions," says Judith Robinson, IP litigation partner at Norton Rose
Fulbright Canada LLP in Montréal. " is is going to lead to greater costs for business concerns that
hold trademarks."
e key amendment will eliminate use as a prerequisite to registration of a trademark. Currently,
trademark applications can be fi led on the basis of "proposed use," but registration can't be obtained
until a "declaration of use" is fi led stating the date when use began in Canada or elsewhere.
Under C-31, "we will move to a system where registration can be obtained without use," says
Robinson. " e modifi cations shi the burden largely to the business owners to police these issues."
"Our system of priority to trademark rights is still [going to be] based on fi rst use," says Chris
Wilson, IP litigation partner of Bull, Housser & Tupper LLP in Vancouver, "but we're just taking
that information out of the register. So it gets easier to register the trademark, but far more expensive
to [determine if there is a basis] for oppositions, infringement actions and expungement actions. It
makes work for lawyers."
e amendments could crowd the register with "deadwood" trademarks and have the undesired
eff ect of encouraging "squatters" to apply for registration.
" e concern is you'll have somebody fi le and obtain registrations on well-known marks where
the legitimate trademark owner is going to be approached to purchase the mark for a fee," says
Upcoming amendments to the Trade-marks Act
will mean signifi cant changes, and uncertainty,
for businesses operating in Canada
BY SHELDON GORDON
BIG CHANGES
