Wednesday, April 16, 2014

Canada's TM to get overhaul in new omnibus bill

The Conservative government tabled Bill C-31, the Economic Action Plan 2014, No. 1, the most important changes to the Trade-marks Act since 1953. Included in the omnibus bull will be significant changes to Canada's TM laws. Without amendments, the legislation changes include registrations granted in the absence of use anywhere, this would permit enforcement of trademark rights anywhere in Canada regardless of whether the TM has previously been used in Canada or abroad.
Although the proposed changes are intended to anticipate Canada's accession to the Madrid Protocol, the Nice Agreement, and the Singapore Treaty, key elements of the trademark section of Bill C-31 have little or nothing to do with these treaties. Last year, the Canadian government introduced Bill C-8, the Combating Counterfeit Products Act, which dealt with the creation of a "request for assistance" to deal with counterfeits, and also proposed updating certain aspects of the Trade-marks Act. Bill C-31 repeats many of the non-counterfeit-related changes proposed in Bill C-8, but adds a number of important changes to trademark laws and practice.
The Bill C-31 in full.

1 comment:

  1. The proposed changes will be of great benefit to Canadian businesses. The only category of businesses that the changes will hurt will be large law firms that get a lot of business from U.S. and international clients that—up to this day—cannot take advantage of an option to file an international trademark application that would cover Canada, so they have to hire Canadian trademark agents to do it for them directly.

    It also means that Canadian businesses cannot protect their brands outside of Canada without their legal bills going through the roof.

    Read my comments about the amendments and the reasons why we will hear many law firms sing the same old song about how the current system is so much better, when it—frankly—isn't.