Canadian Lawyer InHouse

11 canadianlawyermag.com/inhouse february 2015 Paul Tackaberry Intellectual Property I n preparation for Canada's upcoming adher- ence to the Madrid Protocol and Singapore Treaty (together, the main system for registering trademarks in multiple jurisdictions), substan- tial amendments to the Trade-marks Act were passed into law in June 2014 ("2014 amendments"). The new regime will come into effect when the Canadian Intellectual Property Office completes the supporting regulations and practice notices, which is expected to occur by late-2015 or early-2016. A summary of the most significant changes follows. no use information required for filing Under the old system, applicants needed to indicate whether the trademark to be registered had been used in Canada and if so, the date of first use. In order to rely on a foreign registration, the trademark had to be in use somewhere. Gathering this information could delay filing, and incorrect information could form the basis of an opposition. Under the old system, an application based on proposed use in Canada matured to registration only after the applicant made a declaration of use in the Canadian marketplace. Under the 2014 amendments, no use information is required for filing. An application may be filed if the applicant has used or intends to use the mark in Canada. Actual or intended use need not be specified. Applications based on use and registration abroad and declarations of use are abolished. The new single basis of application does not alter the first-to-use entitlement regime that has always been in effect in Canada. As before, an application may be opposed on the basis of a third party's prior use and/or a pre-existing application or registration. CIPO will continue to examine applications for confusion with pending and registered trademarks, as well as other registrability issues such as descriptiveness. adoption of nice goods and services classification system Until the 2014 amendments, Canada was one of the few countries that did not follow the Nice classification sys- tem; disparate goods and services were lumped together into long lists, and the filing fee was the same regardless of the breadth of the lists. When the 2014 amendments come into force, applicants will have to group their goods and services according to the 45 classes in Nice. Presumably, there will be increased government filing fees depending on the number of classes involved. other changes The definition of "trademark" is expanded to include the following: word, personal name, design, letter, numeral, colour, figurative element, three-dimensional shape, hologram, moving image, mode of packaging goods, sound, scent, taste, texture, and the positioning of sign. This will provide CIPO with more leeway to consider applications to register non-traditional marks. After a trademark is filed, a CIPO examiner checks it for compliance with technical requirements and sub- stantive issues, which, under the old system, generally have been confined to confusion and other registra- bility issues such as descriptiveness. When the 2014 amendments come into force, examiners will be able to make distinctiveness objections against any application and require proof of distinctiveness at the examination stage, for example, when Internet searches reveal that the trademark is in common use in the marketplace. Prior to the 2014 amendments, a confusion citation (or other registrability objection or opposition) against an application for a broad range of goods and services would hold up the entire application. Now, by creating a divisional application, the problematic portion of the application can be carved out and dealt with separately so that the rest of the application can proceed to registration. The term of registration will be reduced from 15 years to 10 years. Trademark will now be spelled as one word, rather than the hyphenated "trade-mark" in use since the 1990s. In addition, "goods" will now be used instead of "wares." Other aspects of the Canadian trademark regime remain unchanged. For example, summary non-use cancellation proceedings cannot be commenced until three years after a registration has issued. As before, a registration may be renewed without filing proof of use, or even asserting use. This period of change is not without controversy. Scott Smith, director for intellectual property and innovation policy at the Canadian Chamber of Com- merce, was quoted in The Globe and Mail in November saying: "We are concerned from a business owner's perspective about the potential costs that are being unloaded on to businesses." IH major changes to trademark registration on the way use information not required for filing. Paul Tackaberry is counsel with Ridout & Maybee LLP in Toronto.

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