October 31, 2018
By Cynthia Rowden, Scott MacKendrick and Tamara Céline Winegust
On October 29th, Canada’s federal government tabled an omnibus budget implementation bill that includes many provisions relating to intellectual property, including several that will impact trademark rights in Canada. Bill C-86, entitled The Budget Implementation Act 2018, No.2, is more than 800 pages long. It amends dozens of existing Federal laws, creates new government departments, and includes new statutes in their entirety. For example, a new Act creating a “College” for the licensing and regulation of patent and trademark agents is embedded within the Bill.
The Bill contains many provisions that address long-standing complaints about trademark practice in Canada, including the protection of official marks, and adds clarification and certainty regarding changes proposed by earlier legislation amending the Trademarks Act. It is the second omnibus budget bill to have a substantial impact on the Trademarks Act and the trademarks landscape in Canada. The first, Bill C-31, entitled Economic Action Plan 2014 Act, No.1, was introduced in 2014 and contains countless amendments to the Trademarks Act, including the removal of use” as a registration requirement. While passed, the amendments are not yet in force, although the government has promised the implementation as soon as late spring/early summer 2019.
The length and details of the new Bill require careful study, but highlights of the proposed changes include:
Bill C-86 contains other amendments to renewal procedures, relevant dates for assessing distinctiveness, and, as noted above, an entire new Act dealing with regulation of patent and trademark agents.
The transition and coming into force provisions are complicated, since many sections of this Bill amend provisions in earlier amendments to the Trademarks Act that are not yet in force. Given that more than four years have passed since the last major amendments were passed, and are still not implemented, it is difficult to predict how quickly the Bill C-86 changes will become effective.
The intellectual property provisions in Bill C-86 fall under the heading of “Intellectual Property Strategy”, and are designed to improve the IP landscape for Canadians and other owners of IP in Canada. Many of the Bill’s trademark provisions address long-standing problematic issues, such as official marks of public authorities. Others are designed to limit abuse of rights issues that are already apparent from the Trademarks Act amendments passed in 2014, but not yet implemented. The recent USMCA negotiations suggest that even further amendments may be required, for example, to deal with seizure of counterfeit goods “in transit” through Canada, raising the possibility of additional amendments to Bill C-86 before it is final. What is certain is that there are many changes ahead for brand owners.
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