Canadian Lawyer

w w w . c a n a d i a n l a w y e r m a g . c o m S E P T E M B E R 2 0 1 8 49 S et to come into effect next year, the legislative changes to the Trade- marks Act will bring Canada in line with international treaties and make trademark applications faster. But the changes will likely cause uncertainty for trademark lawyers, and the removal of the use require- ment may open up the trademarks register to a flood of speculation. These changes have "been a long time coming," says Richard Naiberg, partner in the intellectual property group at Goodmans LLP. "There's good and bad for trademark lawyers and, probably, mostly uncertainty," he says. While the elimination of use as a requirement for trademark ownership has upended a Canadian legal tradition of over 100 years, trademark lawyers say the formerly inaccessible federal government is now open to receiving their input. After the legislative changes to the Trade-marks Act, Bill C-31 were developed and passed with very little consultation with the profession, the current federal government has charted a new course with a collaborative approach and "signifi- cant consultation," says Mark Evans, a partner at Smart & Biggar in Toronto. "In 2014, the federal government was not pre- pared to engage in any meaningful consultation whatsoever," he says. Now, the government is listening to the pro- fession and other stakeholders, says Cynthia Rowden, counsel at Bereskin & Parr and former president of the Intellectual Property Institute of Canada. "There was zero collaboration and consulta- tion with Bill C-31, and yet the amount of col- laboration and consultation with respect to the next stages, the implementation, has just been diametrically opposed and it's very welcome. . . . I think it results in a much better system at the end of the day." The amendments include the elimination of use of a trademark as a registration require- ment, expanding the definition of a trademark to include tastes, sounds, smells and other signifiers, permitting the division and merging of trade- mark applications to expedite approved applica- tions and isolate those being opposed, shortening registration terms and creating new examination and opposition grounds. The changes to the act will also institute three international trademark treaties: the Nice IP lawyers are optimistic that Ottawa's new openness to consultation will address problems with the impending trademark overhaul By Aidan Macnab TRADEMARK UPDATE I N T E L L E C T U A L P R O P E R T Y L E G A L R E P O R T HUAN TRAN

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