Upcoming legislative changes in Canada will introduce sweeping reforms - most notably implementing Madrid and the Nice classification system in line with international standards. However, the legislation has a checkered history having been slipped into a budget bill without consultation and is causing problems even before it is introduced.
Delays, delays, delays
Implementation of the legislation has been put back multiple times after it was signed into law way back in 2014. That may not be unusual with this kind of reform, but the new laws will remove the need to file Declarations of Use and many applicants either filed on the basis that proposed use marks would register without the need to file a Declaration before the three year time limit to do so ran out, or paid for years of extensions on the same basis. We’re now seeing proposed use applications go abandoned with the new laws still not in place. Now slated for 2019, no-one knows quite when they will take effect.
In addition to implementing Madrid and Nice, new rules on use requirements and the ability of Examiners to refuse marks based on distinctiveness will also apply. New regulations are being drafted (as you’d expect) but there’s a growing feeling among the profession that the Canadian Trademarks Office (potentially from the top down) is foreshadowing rules that do not yet apply. The standards on requirements like descriptiveness seem to be shifting despite an insistence that no new policies have been adopted. Anything that contains a hint of a geographic name, however minor it may be to the mark as a whole, is provisionally refused. Applicants and brand owners should not have to pre-empt legislation that has not yet taken effect, but for now they are having to second guess previously settled policies.
Lawyers and agents now find it difficult to predict where the bar may be set on a growing number of issues. This is not helped by what seems to be significant turnover among staff as the Office re-tools for the upcoming reforms. Applications now seem to be interpreted either with one eye on the upcoming amendments (which the Office likely knows more about than the rest of the profession) or with a broader scope for objections to be raised than applicants might reasonably expect under the prevailing regulations and case law. The result? Growing confusion and with it mounting costs and frustration.
There is much to look forward to under Canada’s revamped trade-mark regime. However, the transition is becoming bumpy before it has begun and the Office might be well served by ensuring that applicants are not prejudiced by rules and regulations that are not yet in force - and that may not be for some time based on the delays we have seen to date.