2018 was an exciting year for the trademarks profession in Canada. The long awaited changes to our Trademarks Act were announced, many of which will bring us in line this year with the rest of the world. There will also be a significant impact on trademark protection from further unexpected legislative developments that were announced in 2018.
This article provides our readers with a summary of highlights from 2018, including links to our previous articles. In addition, we have prepared a separate summary of notable trademark decisions from the Canadian courts last year, which you can read here.
New trademark law and regulations
The Canadian government finally set a date for the implementation of Bill C-31, which will overhaul Canadian trademark law. In November, the federal government announced that the bill's long awaited coming-into-force date will be June 17, 2019, and published the new Trademark Regulations. Some of the key amendments include:
(i) the elimination of filing grounds and Declarations of Use;
(ii) expansion of protection for non-traditional marks (i.e. colour per se, taste, scent, texture, holograms, and moving images);
(iii) shortened renewal term (i.e. from 15 to 10 years); and
(iv) accession to the Madrid Protocol, Nice Agreement and the Singapore Treaty.
Our articles The date is set: June 17, 2019 — Canada’s New Trademark Law will be in Force and Significant change for non-Canadian brand owners under the new Trademarks Act expand on these and other points.
Budget Implementation Act, 2018, No. 2
Each year, the federal government enacts one or two omnibus acts, implementing provisions of the federal budget tabled in Parliament in the spring. The second budget bill of 2018, enacted as the Budget Implementation Act, 2018, No. 2, received Royal Assent on December 13, 2018. It amends dozens of federal laws and includes several important trademark-related provisions. Some notable changes include:
(i) the addition of a bad faith ground of opposition;
(ii) requiring use of a registered trademark from obtaining relief in a proceeding alleging infringement or depreciation of goodwill during the first three years after registration;
(iii) clarifying the prohibitions against the use of official marks adopted by public authorities;
(iv) allowing the Registrar to grant confidentially orders, cost awards and provide case management deadlines;
(v) requiring leave to file evidence on an appeal of a Registrar’s decision to the Federal Court.
See the following article for further details: New Bill C-86 introduces many more changes to IP laws.
“NAFTA 2.0”
Canada also reached a new free-trade agreement with Mexico and the United States that replaces the former North American Free Trade Agreement (NAFTA), known as USMCA stateside, or CUSMA north of the border. In relation to the CUSMA’s trademark-related provisions, Canada is already greatly in compliance with these provisions, or will be once the amendments to Canada’s Trademarks Act come into force. For instance, the CUSMA requires that Canada ratify or accede to the Madrid Protocol and the Singapore Treaty, adopt a trademark classification system consistent with the Nice Classification system and not deny registration to scent marks. All of these changes were already underway, and will be coming into force on June 17, 2019.
More on CUSMA is provided in our article concerning USMCA vs NAFTA: What’s changed and what it means for IP in Canada.
Concluding remarks
In 2019, we look forward to the implementation of Bill C-31, along with the many new opportunities it brings for brand owners to protect their trademarks, including through international applications/registrations, and the expansion of non-traditional trademarks to include colour per se, scent, taste, texture, sound, moving images and holograms.
If you have any questions about these changes, please contact a member of Trademarks practice group.
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.