Canadian Lawyer InHouse

9 canadianlawyermag.com/inhouse june 2014 By janet M. Fuhrer Intellectual Property The changing landscape of trademarks law and practice A look at the impact of Bills C-8 and C-31. O n Jan. 27, the Canadian Government took the unprecedented step of tabling five intellectual property law treaties in the House of Commons. The three trade- mark treaties are: Protocol Relating to the Madrid Agreement Con- cerning the International Registration of Marks, Singapore Treaty on the Law of Trademarks, and Nice Agreement Concerning the Interna- tional Classification of Goods and Services for the Purposes of the Registration of Marks. These treaties represent international harmoniza- tion efforts. The Madrid System administered by the International Bureau of the World Intellectual Property Organization is comprised of the Madrid Agreement Concerning the International Registration of Marks (April 14, 1891) and the Madrid Protocol of June 27, 1989. The International Bureau of WIPO is a gateway for harmonized national filings and registration, with streamlining of procedures for renewal and for recording changes of address, ownership, and representation. The Singapore Treaty is considered an updated version of the Trademark Law Treaty of 1994, both of which focus on convergence in the field of administrative trademark procedures. The Nice Classification consists of a list of classes together with explanatory notes and an alphabeti- cal list of about 10,000 goods and 1,000 services which fall in 34 classes of goods and 11 classes of services. The Canadian approach to implementation is exemplified in the Combating Counterfeit Products Act (Bill C-8) and the Economic Action Plan 2014 Act, No. 1 (Bill C-31). Though Bill C-8 was introduced long before the treaties were tabled, efforts by the Federal Government to comply with the Singapore Treaty in particular were evident. Upon royal assent, these bills will change the Trade- marks Act and trademarks practice fundamentally. The hyphenated word "trade-mark" adopted in 1989 has been replaced with the compound word "trademark" under Bill C-31, notably Division 25 of Part 6. Further, a trademark can be comprised of a sign or combination of signs and the term "sign" has been given an expan- sive definition in both bills including non-traditional indicia such as texture, taste, and scent. References to "wares" are replaced with the term "goods." WhaT else is in sTore? The adoption of the Nice Classification under Bill C-31 (with the registrar having final say regarding the applicable classification of goods and services) could result in per class fees but we will likely need to wait for regulations by the Governor in Council. The current government filing fee for a trademark application re- gardless of the number and types of goods and services is $250, while the government registration fee is $200. The registrar can call for classification regarding existing registrations and expunge registrations where there is no timely reply. Section 14 appears to be eliminated (ss. 14 and 15 have been replaced with new s. 15 only under Bill C-31); so holders of foreign registrations will need to meet the higher threshold of "acquired distinctiveness" under re-numbered s. 12(3) if the applied for trademark is considered to be unregistrable because of full name or surname significance, clear descriptiveness, or deceptive misdescriptiveness. Certification marks can be used or be proposed to be used but no declaration of use will be required for any trademarks prior to registration. The elimination of the requirement to declare "use" is a fundamental shift and one of the more significant changes to the Trademarks Act. "Use" still could have a role, however, in the con- text of third-party trademark oppositions or litigation. Contents of applications have been streamlined. While goods and services still must be described in or- dinary commercial terms, the requirement to do so "spe- cifically" has been eliminated, along with the require- ment to indicate a ground such as use or proposed use of the trademark in Canada. The latter change is consistent with the elimination of the need to declare use. Minimum requirements to receive a filing date do not include Nice Classification. Failure to comply with minimum requirements will result in an application being treated as though it never was filed, if the default is not rectified within two months of notice from the registrar. IH Janet M. Fuhrer is a partner with Ridout & Maybee LLP.

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