Bob Reaume is vice-president of policy and research at the Association of Canadian Advertisers
Bob Reaume
Quite a significant change to the Trade-Marks Act has been found buried in the federal government’s Bill C-31, The Economic Action Plan 2014, No. 1 – an omnibus budget bill now at second reading and making its way through Parliament. Keen observers will recognize this as the same tactic employed a few years ago by the federal government to make significant changes to the Competition Act, including raising the maximum penalty for misleading advertising from $100,000 to $10 million.
This new change to the Trade-Marks Act will have a dramatic impact on the protection and enforcement of trademarks, trade names and business names in Canada, adding costs, uncertainty, inconvenience, and confusion for Canadian businesses.
If passed, it will eliminate the requirement to prove “use” before registration of a trademark and allow any applicant to register a trademark in Canada without any need to use the trademark in Canada or abroad prior to registration. It will also not require applicants to state whether they have used the trademark or the date of such use, making it impossible to know whether a mark has prior rights when it is advertised for opposition.
These changes to the Act are sure to encourage not only trademark trolling and pirating, but increase the need for trademark oppositions to determine priority rights. In addition, the trademarks register will likely become increasingly cluttered, making searching and clearance even more difficult and expensive.
These obviously significant changes were not discussed publicly, and a consultation was not undertaken with the users of the trademark system, prior to it being proposed into law.
For a deeper look at this issue, read Fundamental change to trade-mark law will impact marketers by Sheldon Burshtein and Antonio Turco of Blake, Cassels & Graydon LLP
