Trademark and counterfeit law reform in Canada

Two bills that recently became law in Canada are changing the country’s regulatory landscape around trademark and counterfeit issues. Both bills include amendments intended to bring reform to these areas.

Bill C-31, which became law on 19 June 2014, contains amendments that will lead to significant changes in Canadian trademark law. The amendments are intended to make the registration process under the Trade-marks Act consistent with international treaties (the Singapore Treaty, the Nice Agreement and the Madrid Protocol). However, the bill contemplates substantive changes beyond those required by these treaties. The amendments are not expected to come into effect until 2016 as the government is first drafting regulations to assist with the implementation of the legislation.

The amendments make many changes to the Trade-marks Act. Some highlights include the following.

Elimination of use requirements: Currently, Canadian law requires that a trademark be used somewhere in the world before it can be registered in Canada. The amended legislation will no longer require an applicant to declare use, which may lead to an increase in “paper registrations”, making it more costly and complex to clear marks for use in Canada, and more difficult to assess entitlement between parties. Prior use of a trademark will still govern entitlement, but it may be more difficult to assess, and brand owners may need to be more vigilant in opposing trademark applications.

Torys LLP is an international business law firm that works with clients who expect the best advice and service. Michelle Nelles is counsel and Kevin Tuohy is an associate at the firm.