Carters Professional Corporation


April 29, 2014
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Editor: Terrance S. Carter



By Colin J. Thurston*


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”)[1], the Singapore Treaty on the Law of Trademarks (“Singapore Treaty”)[2] and the Nice Agreement Concerning the International Classifications of Goods and Services for the Purposes of the Registration of Marks (“Nice Agreement”).[3] 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[4] 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 discussed below.


Bill C-31 has been labeled as an omnibus bill, and among its many propositions are sweeping amendments to the Trade-Marks Act,[5] 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,[6] (formerly Bill C-56 under the last parliamentary session) which would implement additional and complementary changes to the Trade-marks Act.[7]

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 basis.


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.

* Colin J. Thurston, B.A., J.D. is an associate of Carters Professional Corporation and a registered trade-mark agent with the Canadian Intellectual Property Office. Colin practices at Carters’ Orangeville office in the areas of intellectual property, privacy and information technology. He would like to thank Adriel Clayton, B.A. (Hons), J.D., Student-at-Law, for assisting in the preparation of this bulletin.

[1] World Intellectual Property Organization, Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (as amended on November 12, 2007), TRT/MADRIDP-GP/001, online: <>.

[2] World Intellectual Property Organization, Singapore Treaty on the Law of Trademarks (adopted at Singapore on March 27, 2006), online: <>.

[3] World Intellectual Property Organization, Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (as amended on September 28, 1979), online: <>.

[4] Bill C-31 can be accessed and its status can be monitored online at: <>.

[5] RSC, 1985, c T-13.

[7] For commentary on Bill C-56, see “Bill C-56 to Modernize Trade-marks Act and Strengthen Brand Protection” by Colin J. Thurston in the March 2013 Charity Law Update, online at: <>.


DISCLAIMER: This Charity Law Bulletin is a summary of current legal issues provided as an information service by Carters Professional Corporation. It is current only as of the date of the Bulletin and does not reflect subsequent changes in the law. The Charity Law Bulletin is distributed with the understanding that it does not constitute legal advice or establish the solicitor/client relationship by way of any information contained herein. The contents are intended for general information purposes only and under no circumstances can be relied upon for legal decision-making. Readers are advised to consult with a qualified lawyer and obtain a written opinion concerning the specifics of their particular situation.
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