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Significant Changes to the Trademarks Act an Omnibus Budget Implementation Bill Tabled in Parliament – Simplification or Complication?

March 28, 2014

By Cynthia Rowden and R. Scott MacKendrick

The Canadian government has today tabled an omnibus budget implementation bill, Economic Action Plan 2014 Act, No.1 (the "Bill"), that contains significant amendments designed to conform Canada’s Trade-marks Act with major international trademark treaties, namely the Madrid Protocol, the Nice Agreement and the Singapore Treaty. If passed, these would be the most significant amendments to the Act since it was first enacted in 1953.  

The Bill proposes amendments to reduce the information required when filing a new application, eliminates the requirement to file a declaration of use in Canada prior to registration, reduces the term of registration of a trademark from 15 to 10 years, and adopts the classification system established by the Nice Agreement. 

Practically, one of the biggest changes relates to simplified filing grounds. Applicants will no longer have to identify a date of first use, or provide details of any use and registration abroad. It seems, at first glance, that this will make it very difficult for other trademark owners and applicants to evaluate the impact of new applications. 

While the government has suggested that these steps – as part of its move to accession to the treaties above – may assist trademark owners and encourage Canadian small and medium enterprises to make more use of the international trademark system, the changes may result in more uncertainty, risks and costs for all trademark owners when selecting and using new marks, and when evaluating oppositions and other enforcement proceedings.

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Author(s):

R. Scott MacKendrick R. Scott MacKendrick
B.A.Sc. (Chem. Eng.), LL.B.
Partner
416.957.1675  email R. Scott MacKendrick