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UPDATE:  Canada joining Madrid – the Myth will become Reality!

In a previous e-news, we talked about the introduction of Bill C-31, which aims to implement the Madrid Protocol, the Singapore Treaty and the Nice Agreement. Bill C-31 received Royal Assent on June 19, 2014, which means that it is expected to be proclaimed into force within the next year.

Some of the Anticipated Impact of the Changes to the Trade-marks Act resulting from Bill C-31

With the elimination of the use requirements, all applications reaching the allowance stage will be registered irrespective of the basis on which they were filed. This means that intent to use applications will proceed to registration without the need for use to have taken place in Canada, which will eliminate the need to file extensions of time to file a declaration of use.  

The elimination of the use requirements may well result in a flood of new applications by ‘trade-mark squatters’ and speculators. Brand owners are highly encouraged to review their filing strategy for Canada to avoid difficulties or disappointment. Consideration should also be given to cover a broader categories of goods and services since there will be no need to use the mark in Canada to obtain a trade-mark registration.

Currently, goods and services must be defined in ordinary commercial terms. It is not yet known if the adoption of the Nice Classification system will result in the acceptance of broader terminology than is currently accepted by the Registrar. Since it takes 10 months or more for a newly filed application to reach examination, consideration should be given to cover a broader categories of goods and services pending the changes to the trade-mark legislation and regulations.

The renewal term will be changed from 15 years to 10 years. While it is not yet known whether the renewal term will be changed for all existing registrations, it is likely that it will take effect for registrations set to expire after the implementation of the new legislation. Early renewal may be advantageous to secure a final 15 year term.

The Charter of the French Language cannot override the Trade-marks Act — or can it?

The uncertainty has resurfaced. While we had hoped that the decision from the Quebec Superior Court which confirmed that businesses were not required to add a French generic term to trade-marks used in commercial advertising (such as on storefronts) would bring peace of mind to brand owners [click here – previous e-news], this decision is under appeal. Stay tuned for further updates.

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