The Canadian Trade-marks Office is again seeking comment on possible modernization of the Canadian Trade-marks Act. These efforts are clearly the precursor to further consideration of adoption of the Singapore Treaty and the Madrid Protocol.
One of the main topics will undoubtedly be how to modify Canada's trade mark use requirements to make these consistent with the Madrid Protocol process. In Canada, applications may be based on prior use in Canada, proposed use in Canada and/or foreign use and registration. There is also the rarely utilized basis of making known in Canada. The necessity of providing use information creates an uneasy fit with the Madrid system since international applications do not contemplate the provision of this information on filing.
The Canadian system works quite well inasmuch as it balances the efficient grant of rights while ensuring that registrations reflect "real" rights. Canada does not require post-registration proof of use for all registrations; however, because an application will not proceed to registration unless and until use has commenced in Canada or abroad, a safeguard does exist.
The option of accommodating the Madrid Protocol by removing the proposed use basis, or indeed other bases, would seem to alter for the worse a system that ensures that registration reflects actual use-based rights as opposed to theoretical interest. Furthermore, the proposed use basis can be quite useful to some industries with lengthy R&D. Assuming it is decided that registration not reflective of use-based rights is essential, the preferred approach might be to modify the current foreign use and registration basis, or add another basis entirely, permitting immediate registration but in conjunction with requirements to demonstrate post-registration use. Regardless of the solution, it is imperative that any new system ensure that registrations define real rights. Much of the responsibility for this task must fall to the Canadian Registrar since the long, costly and evidence-intensive opposition and court processes can render direct challenge by businesses with conflicting marks non-viable.
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| Coleen Morrison |
Marks & Clerk Canada
PO Box 957, Station B
Ottawa ON K1P 1C2
Canada
Tel: +1 613 236 9561
Fax: +1 613 230 8821
info@marks-clerk.ca
www.marks-clerk.ca
