On March 28, as part of the Economic Action Plan 2014, the Canadian government proposed amendments to the Trademarks Act. These will be the most significant changes since the 1953 act.
According to the government, the goal is to bring Canada in line with major international trademark treaties. Yet, some expert observers of trademark law believe that these changes are more closely linked to achieving administrative efficiency rather than complying with these treaties.
Amongst the major changes, Canada seeks an expansion of the definition of trademark in order to cover “a sign or combination of signs”. The international Nice Classification of goods and services classes 1-45 will also be adopted.
The trickiest question remains the acceptance of the registration of trademarks without taking into consideration previous use in Canada or abroad. There is currently a close link between trademark law and good faith in Canada. Such dissociation would contradict 140 years of case law which confirmed previous use and good faith as prerequisites for the protection of a Canadian trademark. This prerequisite of use prevents the accumulation of trademark applications that are standard in Europe.
The main effect will be an increase in objections to trademark applications by legitimate users or if the trademark has not been used for over 3 years. This bill may indeed increase the number of trademark applications made in bad faith. This simplification of the process may also lead to a loss in value of the trademark itself.
The commercial dimension of this bill through its integration in the Economic Plan seems to disappear with the trademark’s previous use prerequisite. Thus, some believe that this novelty is in violation of the Canadian constitution.
Important developments are thus expected in response to these proposed amendments to the Canadian Trademarks Act.