Industry Players Divided Over Proposed Changes To Canada’s Trademark Bill

by T+B Blog Team on April 9, 2014

Recent proposals concerning amendments to Canada’s “Trade-marks Act” have put industry players at odds over the feasibility of some of the planned changes, since they could adversely affect thousands of firms if approved in their current form.

In a blog post, the World Trademark Review (WTR) commented that while the planned drop of the hyphenated spelling of the word “trade-mark” was broadly welcomed, other aspects of the country’s new trademark bill raised a few eyebrows. One of the trademark practitioners to express opposition to the changes was Daniel Bereskin, a founding partner of intellectual property law firm Bereskin & Parr, who said in a press release that such changes could hinder the operations of small and medium-sized businesses.

In the statement, Bereskin and his partners Cynthia Rowden, and Scott MacKendrick, said that although the changes were primarily aimed at bringing Canada’s regulations in line with the Madrid Protocol, the Nice Agreement, and the Singapore Treaty, the proposed amendments in fact have a far wider reach. The press release gave the following example: “… in a significant departure from current and historical use requirements, applicants will no longer have to specify or declare that use of the mark has commenced in Canada in order to be granted a certificate of registration.”

Similar concerns were voiced in the WTR blog post by Monique Couture, partner at law firm Gowlings, who said that although trademark applicants will no longer be required to declare that the use of a trademark has begun in Canada in order to receive a certificate of registration, applications would still be sensitive to use-based challenges. The definition of trademark will be significantly extended, with examiners to be given powers to reject an application on the preliminary ground of distinctiveness, Couture said.

Nevertheless, there are several measures that would bring positive changes that should not be ignored noted Shane Hardy, partner at Cassels Brock. One of them is the proposal concerning the ability to register non-traditional marks, which will show Canada’s willingness to tap innovative brand identification techniques, he said.

What’s your opinion on the dropping of the hyphen in “trade-mark”?

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