Possible Modernization of Canadian Trademarks Act
June 27, 2005

The Canadian Trademarks Office (TMO) has solicited comments and suggestions from the Canadian trademark profession, as well as other interested parties, for revising and modernizing the Canadian Trademarks Act.

By way of background, the TMO and the Canadian Government are considering whether Canada should adhere to the Trademark Law Treaty (TLT) and the Madrid Protocol. As part of this process, the TMO has proposed certain amendments to the Canadian Trademarks Act that would be required, and other amendments that may be desirable, should Canada adhere to those agreements. The TMO is soliciting comments to its proposals, which may be found here:
http://strategis.ic.gc.ca/sc_mrksv/cipo/tm/tma_mod-e.html

Canada has not confirmed that it will adopt TLT and Madrid. However, given the adoption of these agreements by Canada's major trading partners, it seems inevitable that Canada will adopt these agreements at some point in the future. In recognition of this possibility, the TMO has proactively considered what consequential amendments to the Canadian Trademarks Act would be necessary or desirable.

The proposed amendments are too extensive to list here in their entirety. However, some of the proposed changes may be summarized as follows:

  • There is currently no requirement for owners of Canadian trademark registrations to prove use of their registered trademarks, except if the registrations are challenged in expungement proceedings. The TMO has proposed that owners of registrations be required to demonstrate use of their registrations periodically in order to maintain them.
  • Canada is one of the few countries in the world that does not use the Nice classification system for goods and services. The TMO has proposed adopting this system.
  • Currently, the TMO will not register marks consisting of sound, motion, animation, scent, taste, or color per se. In the proposal, the TMO has requested comments concerning whether the TMO should allow such non-traditional marks to be registered.
  • Currently, trademarks applications cannot be divided. The TMO has proposed allowing a parent application to be divided into two or more divisional applications, where the goods/services in the parent application could be divided among the two or more divisional applications, with the divisional applications maintaining the original filing or priority date.

Smart & Biggar has forwarded a response to the TMO. Our response addresses the specific proposals raised by the TMO, and suggests various amendments to the Trademarks Act which were not specifically proposed by the TMO. A copy of the full text of the Smart & Biggar response is available at the following link:
http://www.smart-biggar.ca/assets/CIPOResponse.pdf

Philip D. Lapin, Ottawa