Canadian Lawyer

50 S E P T E M B E R 2 0 1 8 w w w . c a n a d i a n l a w y e r m a g . c o m Agreement, Singapore Treaty and Madrid Protocol. The Canadian Intellectual Property Office says joining these treaties will "reduce administrative burden," "align with international best practices" and attract foreign business. The Nice Agreement is an international classification system for registering marks, established in 1957. All goods and services that can be trademarked are divided into 45 classes and countries that are party to the agreement must register marks accordingly. The Singapore Treaty "aims to make national trademark reg- istration systems more user-friendly and reduce business compli- ance costs for trademark owners," says CIPO. The Madrid Protocol is an international registration system that allows trademark appli- cants to register in multiple countries through a single application. Naiberg says that, with the new international treaties, there is fear that work might dry up, primarily at the beginning of the reg- istration process. Someone from Brazil who wants to register their mark for use in Canada can do so by designating Canada when they file into the Madrid Protocol and they will not need to hire a Canadian lawyer. "Obviously, it's going to reduce the work of trademark lawyers in Canada and trademark agents in Canada, at least up front," he says. But this globalization will mean that applicants file more broad- ly, he says. He expects this will create more business for lawyers at the opposition stage. "So, the changes are somewhat balanced," Naiberg says. "It remains to be seen how it flips out." The Nice system will make applications more expensive, while the government is already raising application fees, according to Philip Lapin, patent and trademark agent and partner at Smart & Biggar in Ottawa. A filing fee of $330 will be paid for the first class, plus $100 for every other class of goods for which the mark is registered. Currently, the fee is just $250 and applies to all goods and services. "Clients are being advised if they have trademarks they haven't filed . . . and if they do cover a broad scope of goods and services, they should certainly do so before the new act comes into place to save some money," Evans says. In response to the backlash over certain changes to the act, Evans says, the government has proposed two amendments — one to add a ground of opposition for pending applications filed "on the basis of bad faith" and the other the ability to file a suit or injunction if use of the trademark has not commenced within three years — but Evans says these may not solve the problem with the legislation. "I don't think that that will fully deal with all the concerns that have been raised by business and the profession," he says. Currently, the filing grounds on which trademark applicants form the basis of their claims include: proposed use in Canada, current use and use in a foreign country. Under the new act, these use requirements will be eliminated. The end of the use requirement is the most significant aspect of the changes to the law, say trademark lawyers. The common law orientation on trademarks is that those who use a mark in the marketplace, who develop goodwill and a reputation with the public in association with that mark, thereby obtain trade- mark rights. Now, a company can register its mark first and develop that connection later — or not. "Under the new act, anyone can register a trademark even if use of the trademark hasn't commenced. That's never been the case. It's always been the case that to obtain a registration in Canada there has to be use either in Canada or that you've relied upon a foreign trademark registration," he says. Evans says there are both advantages and disadvantages to losing the use requirement. The process for registering a trade- mark will be "faster, simpler and less expensive," he says. The bad news is it will clear the way for "trademark trolls," where a person buys up trademarks with no intention of using them, only to lay claim to them and sue or charge for licence others who want to use the mark. The same phenomenon is seen with patents, where patents are bought up as an investment, as well as with "cybersquatting," where people buy up domain names and sell them to businesses for a premium. According to the Canadian Intellectual Property Office, the amendments to the Trade-marks Act are intended to put Canada in line with Nice, Singapore and Madrid. Rowden says she attended two parliamentary hearings on Bill C-31, where she heard the government argue that these interna- tional statutes required the disposal of the use requirement. "Which is not true and the best illustration of why it is not true is that, [in] the United States, use remains the registration require- ment," she says. L E G A L R E P O R T Celebrating seven years of success in trademark agency and IP litigation. Let us earn your trust. www.shiftlaw.ca 647-361-7533 info@shiftlaw.ca ntitled-8 1 2018-08-14 3:44 PM

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