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First Major Reform of the Trade-Marks Act 50 Years After its Adoption

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Intellectual Property Bulletin

After several attempts, the first substantial reform of the Trade-Marks Act will finally occur through a budget implementation act entitled Economic Action Plan 2014 Act, No. 1, or Bill C-31. This Bill received Royal Assent on June 19, 2014. The coming into force date will be set by the Governor in Council once updated Trade-Mark Regulations have been adopted, and an information technology systems upgrade has been completed at the Canadian Intellectual Property Office. Public consultations regarding the future regulations will take place during the coming months. At this stage, it is difficult to predict when the provisions of this Bill which concern trade-marks will come into force.

This reform has been presented as an improvement to Canadian trade-marks legislation to bring it more in line with similar legislation enacted by Canada's trading partners, including notably the European Union (EU). One of the stated objectives of Bill C-31 is to prepare the groundwork for the accession of Canada to three trademarks international treaties (namely the Madrid Protocol, the Singapore Treaty and the Nice Agreement). The accession of Canada to the Madrid Protocol will be a significant development since Canada will then be a party to an efficient international trade-mark registration system, which encompasses over 90 countries (including the United States, China, the European Union and Australia). This accession will facilitate the filing of trade-mark applications for both foreigners in Canada and Canadians abroad.

That being said, this particular reform is not limited to what is strictly necessary to implement these treaties. Other significant changes are being introduced, including the elimination of the requirement to use a trade-mark in order to secure its registration in Canada and by way of consequence, the abolition of declarations of use. It will also no longer be necessary to disclose the date of first use in an application even though use of the mark prior to filing still creates prior rights.

In the next few months we will be publishing a series of information bulletins to explore the essential elements of this reform.

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