Canadian Lawyer InHouse

23 CANADIANLAWYERMAG.COM/INHOUSE MAY 2015 23 CANADIANLAWYERMAG.COM/INHOUSE MAY 2015 F ar-reaching changes to Canada's intellectual property laws will force companies to keep an eagle eye on their trademark and patent applications, watching deadlines and actions by their competitors, fi ling before the new rules bite, and getting ready for a heftier bill. The changes, which the government says will come into effect "in due course," come as Canada moves into line with a series of international treaties, most importantly the simplifi ed international trademark registration system outlined in the Madrid Protocol and the comprehensive classifi cations of trademarks for goods and services mandated by the Nice Agreement. But, in a decision that alarms many in the business and legal communities, the new rules remove the requirement to submit evidence of the prior use of a trademark as part of the registration process. Industry Canada says that change is designed to meet the terms of the international treaties, to harmonize Canadian practices with those of other countries, and to eliminate "unnecessary and outdated administrative com- pliance requirements for businesses." It does not expect a surge in the volume of trademark applications. But lawyers say it will become much easier to reg- ister a mark, and that is likely to trigger more applications, more opposition hearings, and an unwelcome role for trademark trolls. "The simple advice is fi le now, and in particular for certain kinds of trademarks that will be harder to register once these regulations come into force," says Mark Robbins, a partner and trademark and copyright expert at intellectual property law fi rm Bereskin & Parr. "Look at your portfolio of trademarks, and look for holes, look for vulnerabil- ities. Imagine bad actors out there that might be trying to take advantage of your situation and try to address those by fi ling now, bear- ing in mind that if you fi le now probably by the time an application gets to the allowance stage, the new provisions will be coming into force. . . . The message for in-house counsel is to get ready to increase your budget. You're going to have a lot more oppositions, a lot more non-use cancellations." Questioning the logic of Canada's decision to scrap the formal prior-use requirement, he adds: "It strains at the defi nition of a trade- mark. How can a trademark be a trademark if it's never been used? For the last 100 years or more that's what we have understood a trade- mark to be. You're opening the door to trade- mark trolls, or piracy, or squatting." Lawyers agree that the changes, which were included in last year's omnibus budget bill, are the most signifi cant amendments to Canada's intellectual property landscape since the 1950s, and they expect them to take effect sometime in 2016. Eliminating the prior-use requirement will make it simpler to register many types of trademarks (the new rules also broaden the defi nition of a trademark), and that may increase the challenges for legitimate users who have not yet got around to fi ling for a mark that they've been using for a while. "The fear is that there's going to be a bit of a gold rush, a race to the trademarks offi ce by all of these ill-intentioned applicants," says Donna White, a trademark expert who is the managing partner at the Ottawa offi ce of Osler Hoskin & Harcourt LLP. "One challenge for applicants, for business owners, for professionals is just y The fear is that there's going to be a bit of a gold rush, a race to the trademarks offi ce by all of these ill-intentioned applicants. DONNA WHITE, Osler Hoskin & Harcourt LLP '' ''

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