Mar 2018 Charity & NFP Law Update
As previously reported, most recently in the October 2017 Charity & NFP Law Update, on June 19, 2014 major amendments to Canada’s Trademarks Act were passed into law. These amendments introduce significant changes to Canada’s trademark law, some of which are summarized in Charity Law Bulletin No. 360. When these amendments were passed into law, the Canadian Intellectual Property Office stated that the amendments would come into force on a date to be determined after the Trademarks Regulations have been revised, and relevant IT systems have been updated. In this regard, the implementation of these amendments was moved forward with the publication of the latest version of the Trademarks Regulations in the Official Gazette, which set February 1, 2019 as the anticipated coming into force date of the amendments. These changes to Canadian trademark law will introduce the most substantive changes to trademark law in Canada since 1950 and intend to bring Canada’s trademark law in line with various other countries around the world.
Perhaps the amendments that will have the most significant impact on charities and not-for-profits is the elimination of the pre-requisite to use a trademark in Canada prior to obtaining a registration certificate, and the increase in government application filing fees. As previously reported, this will effectively open the door for trademark squatters and pirates to register trademarks and extort value for them from the unregistered trademark owners. In fact, a few applicants have already begun taking advantage of the pending implementation of the amendments by filing hundreds of applications that cover very long lists of goods and services. The advantages of registration prior to the implementation of the amendments is that the government fees remain modest and the impending ability for those applications to eventually register without use. These trademark applications include well-known brands and common names and as a result, many in the sector are speculating that these applicants are abusing the Register given the upcoming amendments to the law and will likely be extorting value from unregistered trademark owners for these trademark registrations.
While the Trademarks Regulations will help to implement practices that will combat these abusive applications, the cost of recovering a trademark registration far outweighs the cost of securing registration. As a result, while the expected implementation date is still almost a year away, charities and not-for-profits are encouraged to carefully review trademark portfolios and be proactive in filing unregistered trademarks in advance of the implementation date to reduce the risk that third parties misappropriate their rights.