In the March 2013 Charity Law Update, potential
legislative updates to Canada’s Trade-marks Act were discussed, as
Canada appeared to be moving toward greater conformity with international
trade-mark laws and related international treaties. Though this previously
reported legislation did not succeed in becoming law, the Government of Canada has
taken numerous steps in 2014 to reintroduce similar and more extensive
legislation which strongly suggest that many long-anticipated changes to
Canada’s trade-mark laws are finally coming. This Charity Law Bulletin reviews
these recent actions by the Government and provides a summary of changes
expected for Canada’s Trade-marks Act.
On January 27, 2014, the Government of Canada tabled
various international intellectual property treaties in the House of Commons,
including the Protocol Relating to the Madrid Agreement Concerning the
International Registration of Marks (“Madrid Protocol”),
the Singapore Treaty on the Law of Trademarks (“Singapore Treaty”) and the Nice Agreement Concerning the International Classifications of Goods
and Services for the Purposes of the Registration of Marks (“Nice
Agreement”). Following this, on March 28, 2014, Bill C-31, An Act to implement certain
provisions of the budget tabled in Parliament on February 11, 2014 and other
measures was introduced in the House of Commons where it underwent first reading. Bill
C-31 subsequently underwent second reading on April 8, 2014. If passed, Bill
C-31 would implement portions of these international intellectual property
treaties into Canadian law. Some of the key changes proposed in Bill C-31 are
B. PROPOSED CHANGES TO THE TRADE-MARKS ACT
Bill C-31 has been labeled as an omnibus bill, and among
its many propositions are sweeping amendments to the Trade-Marks Act, some of which would implement portions of the Madrid Protocol, Singapore
Treaty, and Nice Agreement into Canadian law if passed. The Madrid
Protocol creates an international system for registering trade-marks, the Singapore
Treaty provides a common international standard for trade-mark registration
procedures and the Nice Agreement provides an international standard
for classifying goods and services for registering trade-marks and service
marks. Collectively, these treaties would have the effect of bringing Canadian
trade-mark law and practice more in line with international standards once
legislation is passed to implement their terms.
The changes to the Trade-marks Act proposed in Bill
C-31 build upon amendments to the Trade-marks Act proposed by
Bill C-8, the Combating Counterfeit Products Act, (formerly Bill C-56 under the last parliamentary session) which would implement
additional and complementary changes to the Trade-marks Act.
These pending legislative amendments would introduce some
key changes to Canadian trade-mark law and practice that will have an impact on
charities and not-for-profits, including the following:
· The definition of a “trade-mark” would be expanded to include
more types of non-traditional marks, including 3-dimensional shapes, holograms,
moving images, sounds and textures.
· Canada would adopt the goods and services classification system
under the Nice Agreement, which is currently in use in other
jurisdictions, such as the USA and EU.
· Trade-mark registrations would need to be renewed every 10 years
rather than the current 15 years.
· Simplified requirements for Canadian trade-mark applications,
including no longer requiring applicants to identify “dates of first use” for a
mark that has been used in Canada.
Notably, if this last provision
is passed without changes, this amendment would mean that anybody could
register a trade-mark simply by paying an application fee. Some are already
concerned that this would open up the door for trade-mark squatters to register
currently existing brand names and trade-marks and effectively extorting value for
them from current unregistered owners. Commentators have also expressed
concern for other changes which could result in additional filing and legal
fees for brand-owners to maintain protection for their Canadian registered trade-marks.
Importantly, these changes will also bring Canada much
closer to implementation of the Madrid Protocol for international
applications, which allows applicants to file for registration of marks in
multiple foreign jurisdictions through the intellectual property office of
their home country. For organizations that operate outside of Canada, the
ability to register marks under the Madrid Protocol may be of
significant benefit and can result in substantial cost savings as compared to
individually filing for protection of trade-marks on a country-by-country
The amendments to the Trade-marks Act proposed
under Bill C-31 will introduce vast changes to Canadian trade-mark law in
Canada. It is currently uncertain if or when these amendments will be passed.
As such, charities and not-for-profits should continue to monitor the progress of
Bill C-31 and watch for further reports in future Charity Law Updates.