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How to take advantage of changes to trade mark filing

Philip Lapin and Keltie Sim Luft of Smart & Biggar describe changes to trade mark practice implied by the passing of Bill C-31, and advise quick action to enjoy advantages under existing regulations

Canadian trade mark law and practice are poised for dramatic change. Legislation, in the form of Bill C-31, introduced in the Canadian parliament in March of this year and passed in June, is expected to be implemented within the next few months. The amendments will put Canada in a position to adhere to the Madrid Protocol, the Singapore Treaty and the Nice Agreement, but go well beyond the changes required in order to adopt these treaties. The amendments range from minor matters such as changing "wares" to "goods" and modifying the spelling of "trade-mark" to "trademark" to fundamental aspects of Canadian trade mark law, including the elimination of the need to provide specific information regarding use of the mark at the time a trade mark application is filed. Some of the significant changes are outlined below.

Changes to trade mark use requirements

Canada has always been a use-based jurisdiction, and will remain so insofar as rights between competing parties are concerned and for the purpose of defending non-use cancellation proceedings. However, for the purpose of obtaining a trade mark registration, it will no longer be necessary for an applicant to state whether or not the mark has been used in Canada. There will also no longer be a requirement for filing a Declaration of Use at the end of the application process. Thus, while use will remain of importance, no information regarding use will be provided during prosecution of applications. This will result in a faster and less expensive process, but also opens the door to squatters and pirates who file for registration but have no intention of using a mark in Canada. As a consequence, there will be a significant advantage to being first to file an application to register a mark in Canada.

"This will result in a faster and less expensive process, but also opens the door to squatters and pirates"

Historically, trade mark piracy or squatting has not been a significant problem in Canada, since a mark could only be registered in association with specified goods or services, if the applicant had used the mark in association with those goods or services. Now that it will no longer be necessary to use a mark before it can be registered, the Canadian Trademark Register is likely to become increasingly crowded for two reasons. First, legitimate trade mark owners may include goods and services in their applications beyond those they intend to provide. Second, pirates may obtain registrations for marks they never intend to use in Canada.

There are several implications. Unlike today, it will no longer be possible to simply look at a trade mark application or registration and determine when the owner first used its mark in Canada. Accordingly, more investigations will likely be necessary to determine if and when a mark was first used in Canada. Second, it is likely that many applications will be filed where the applicant has no intention of using the mark in Canada in association with some or all of the listed goods or services. As a result, it will become increasingly important for trade mark owners to monitor the Canadian Trademarks Journal for potential oppositions. Further, for marks that have been registered, there will likely be more Section 45 (summary cancellation) proceedings which require the owner to provide evidence of use of a mark in Canada within the preceding three year period.

New ground of opposition

Although when filing an application it will no longer be necessary to specify if a mark has been used in Canada, a new corresponding ground of opposition will be available. Once the new law is implemented, it will be possible to oppose an application on the basis that the applicant, as of the Canadian filing date, was not using and did not propose to use the mark in Canada. While one of the purposes of this new ground of opposition may have been to discourage piracy and defensive registrations, it will likely be very difficult to prove that an applicant did not have an intention of using a mark.

More non-traditional marks can be registered

The non-traditional marks that have been available for registration in Canada include three-dimensional marks, sound marks and colour marks (in cases where colour is tied to a particular shape). The new legislation will open the door to registration of additional non-traditional marks, including scents, tastes, textures, holograms, moving images and colour that is not tied to a particular form. Given the advantage of first filing, it will make sense for trade mark owners to review their portfolio of marks to determine if any of these new non-traditional marks are in use or planned for use in Canada in order to decide if new applications should be filed in Canada.

To register these non-traditional marks, it will be necessary to provide evidence of distinctiveness (secondary meaning) as of the Canadian filing date. For sound marks, however, it has not been necessary to provide evidence of distinctiveness. Accordingly, there is a benefit to filing new sound mark applications before the legislation comes into force, to avoid the need to prove distinctiveness.

Nice Classification to be adopted

Once the legislation is implemented, all new applicants as well as owners of all applications that have not yet been advertised for opposition will be required to classify their goods and services. Consistent with the existing practice, it will also be necessary for the goods and services to continue to be described in ordinary commercial terms. Interestingly, the legislation has eliminated the requirement for goods and services to be described in "specific" terms. It is unclear if this change will result in a relaxation of the existing requirement for very specific recitations of goods and services.

"Filing now while the flat fee bargain remains in place may be advantageous"

It is expected that classification according to Nice will eventually be required for all existing applications and registrations. Moreover, it is expected that Canada will move from the current bargain flat filing-fee that does not vary depending on the number of classes covered to a per-class filing fee.

Since fees will in all likelihood increase as a result, filing now while the flat fee bargain remains in place may be advantageous, especially in cases where the specification of goods and services is very lengthy. Further, once the Nice Classification system is implemented in Canada, it is anticipated that new types of objections in office actions will be issued complaining about the applicant's proposed classification.

Divisional applications

Under the new legislation, divisional applications will be permitted, which was not previously possible. The change may be beneficial during both prosecution and opposition. During prosecution, if an objection is directed to a sub-set of the goods or services, it will be possible to divide out the remaining goods and services and thereby seek registration sooner for those goods and services. Similarly, if an opposition is focused on only a sub-set of the goods or services, it will also be possible to divide out and obtain a registration for the remaining goods and services.

Correction of errors

Under the existing practice, if the Registrar issues a registration with errors, it is necessary to initiate a proceeding in the Federal Court of Canada to correct the errors. Under Bill C-31, the Registrar will have jurisdiction to correct obvious errors, provided that the corrections are made within six months of the registration date.

10-year renewal

Once Bill C-31 is in force, the renewal term for Canadian registrations will be reduced from 15 to 10 years. Accordingly, any registrations renewed before the implementation of Bill C-31 will benefit from an additional five-year term.

No more associated marks

If an entity owns two or more applications or registrations which would be considered confusing with each other if owned by separate entities, the Trademarks Office associates all such applications and registrations. If marks are associated, it is not possible to record a change of name or assignment against one mark, without recording the change or transfer against all of the marks. The new legislation will abolish the association of marks. This means that trade mark owners will have to be more vigilant to ensure that they do not transfer a subset of confusing marks, since, under Canadian law, this could harm the distinctiveness of all previously associated marks and make it more difficult to enforce rights in the future.

Madrid Protocol

The Madrid Protocol provides for a means of seeking trade mark protection in many countries around the world through the filing of a single application. Canada is one of the few industrialised countries that has not yet adopted the Madrid Protocol. Bill C-31 does not implement the Madrid Protocol. However, the Bill provides for the implementation of regulations that will allow for the adoption of the Protocol. It is anticipated that regulations implementing the Protocol will come into force in 2015.

Implementation of Bill C-31

Although it is possible that Bill C-31 could come into force in 2014, it is more likely to come into force in 2015. Accordingly, anyone wanting to take advantage of the benefits of the existing Canadian trade mark system should file new applications as soon as possible, since there may be little advance warning as to when the new legislation will come into force.

Philip Lapin


Philip Lapin is a partner in Smart & Biggar's Ottawa office. He is the chair of the firm's trade mark practice group, and is recognised as one of Canada's leading trade mark lawyers. With almost 20 years' experience, Philip is responsible for managing and providing strategic advice concerning the trade mark portfolios for many Canadian and multinational corporations. Philip was an adjunct professor at the University of Ottawa's engineering school for many years, teaching trade mark law to non-lawyers. He is also a frequent speaker and author on a wide variety of trade mark-related topics. Philip was awarded the Marie F Morency prize for obtaining the highest mark in Canada on the patent drafting examination. Philip is a Fellow of IPIC (Intellectual Property Institute of Canada), a member of INTA and CBA, and was on the Canadian Trademark Agent Examination Board from 2010-2013.

Keltie Sim Luft


Keltie Sim Luft is a partner in Smart & Biggar's Toronto office. Her practice has been focused on the domestic and international clearance, prosecution, portfolio management, acquisition and licensing of trade marks for over 30 years. Her superior range of depth and experience covers all aspects of the trade mark procurement process, including: providing availability and infringement opinions; filing and prosecuting applications; handling trade mark oppositions, cancellation and enforcement matters; managing portfolios; and, drafting and reviewing licensing, co-existence, joint venture and settlement agreements. In addition, Keltie's practice includes issues relating to marketing and advertising, including packaging and labelling regulations and review, print and broadcasting advertising review, contest and point of sale promotions, coupon and premium promotions and trade, competitor and misleading advertising complaints. Keltie has acted on behalf of clients based in Canada and internationally, operating within a vast array of industries, including pharmaceuticals and nutraceuticals, food manufacturing and distribution, personal care, financial services, clothing, publishing, industrial manufacturing and construction. Keltie is an editor of IP Update – Canada, the firm's IP law bulletin. She is a Fellow of IPIC (Intellectual Property Institute of Canada), a member of INTA and MARQUES (Association of European Trade Mark Owners), and a past member and trustee of LES. She also received a Licensing Executives Society award for significant contribution to the organisation.


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