Royal Assent Received for Most Recent Amendments to Canada’s IP Legislation

Bill C-86, the Budget Implementation Act, 2018 (the “Act”), received Royal Assent on December 13, 2018, after moving through Parliament at a blistering pace. In all, less than two months elapsed between the tabling of the bill and its passage.

These amendments will affect the Trade-marks Act, the Patent Act and the Copyright Act.  In addition, a new regulatory body for Canadian Patent and Trade-mark Agents will be created pursuant to the College of Patent and Trade-mark Agents Act. 

The most significant amendments to Trade-marks Act are as follows:

  • Bad Faith: new grounds for invalidating registrations and opposing applications based on the owner or applicant’s bad faith will be available.
  • Proof of Use: owners of a registrations which issued less than three years ago will need to provide evidence of use in Canada in order to enforce their trade-marks.
  • Leave Requirement: parties to an Opposition proceeding will need to seek leave before filing additional evidence on appeal to the Federal Court.
  • Expanded Powers of Registrar: new powers governing the conduct of proceedings before the Registrar will include the ability to implement regulations for case management, the power to award costs against a party in an opposition and the power to make confidentiality orders in proceedings.
  • Official Marks: Official Marks will be subject to removal, either on the request of a person or by the Registrar’s own initiative, if the entity which made the request is no longer a public authority or no longer exists.

In addition, a new College of Patent and Trade-mark Agents Act has been established

  • Regulatory Body: This new legislation establishes a regulatory body for Canadian patent and trade-mark agents, and provides for offences for unauthorized practice.  The College of Patent and Trade-mark Agents will license agents and conduct a variety of regulatory functions, including practice investigations and disciplinary proceedings.

The coming into force date for the above amendments has not yet been set.  More detailed coverage on the College and amendments to the Trade-marks Act can be found here.

Author: David Bowden

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Delays Nourish Desires: Canada’s New Trademark Laws Come Into Force June 17, 2019

Earlier today, the Canadian Intellectual Property Office announced that long-anticipated amendments to Canada’s trademark laws will come into force on June 17, 2019.  It also published a new set of Trademarks Regulations, which will support those amendments.

First introduced in June of 2014, the amendments contain the most significant changes to Canada’s trademark law in decades, (discussed in earlier posts) including:

  • Canada’s accession to the Madrid Protocol – meaning Canadian entities will be able to file applications in other Madrid Protocol countries through a single application and entities from other Madrid Protocol countries will be able to file applications in Canada using the same process;
  • the elimination of filing bases and use of a mark as a prerequisite to Registration in Canada;
  • the introduction of a requirement to group goods and services into Nice classes and a fee structure based on such classes;
  • the introduction of a 10 year term of registration and renewal; and
  • the introduction of new distinctiveness requirements for registration of marks.

Future posts will discuss the impact of these and other changes.

Neil Melliship and Jeffrey Vicq

Parliament Tables Proposed Amendments to the Trade-marks Act

On October 29, 2018, the Canadian Parliament tabled, in a surprise to many practitioners, the Budget Implementation Act 2 (Bill C-86), which would amend, among other things, the Patent Act, Trade-marks Act, and Copyright Act. In addition, the bill contains provisions enacting the College of Patent and Trade-mark Agents Act .

Proposed amendments to the Trade-marks Act include adding bad faith as a ground of opposition and expungement; requiring use as a precondition of alleging infringement in some circumstances; adding some restrictions to the term of official marks; giving the Registrar additional powers to govern the process of opposition proceedings; and requiring leave to file additional evidence with the Federal Court on appeal from a decision of the Registrar.

David Bowden

About the Blog

The authors of the Canadian Trademark Blog are all members of the Canadian law firm Clark Wilson LLP, based in Vancouver, Canada. Each author's practice focuses–either in whole or in substantial part–on Canadian intellectual property law. Together, they manage the trade-mark portfolios of local, national and international brand owners in nearly all industries and markets.

The Authors