Our very own Scott Lamb’s annual take on major developments in the world of Canadian trademark law has been recently published in the authoritative Annual Review of Law & Practice. A copy of Scott’s insightful update can be found online here. Notably, one of the biggest highlights from 2017 were the publication of draft regulations in relation to the long awaited coming into force of significant amendments to the Canadian Trade–marks Act. These were passed back in 2014 and it is now anticipated that these will come into force in 2019 (maybe).
The Canadian Intellectual Property Office (CIPO) has published a Fee-for-service proposal (the Proposal), seeking public input by July 5, 2016. As previously reported on this blog, the Canadian government significantly amended the Trade-marks Act (the Act) in 2014, in order for Canada to accede to the Singapore Treaty, the Nice Agreement and the Madrid Protocol. Those amendments have not yet come into force, however, pending the adoption of new Regulations on various matters, including fees. The Proposal is the first step in adopting new Regulations on the fees that will be applicable.
The two most significant changes in the Proposal are that:
– there will be one fee payable at the time an application is filed with CIPO, while the current requirement for payment of a registration fee will be done away with; and
– the application fee will include only one Nice Class of goods or services. Additional fees will be payable for each additional Class of goods/services that an applicant wishes to include in the application.
The proposed fees themselves will be in line with what applicants are currently used to in Canada, with reductions in some cases, particularly if the application covers only one Class of goods/services. Having said that, applications that contain more than two Classes of goods/services will face higher fees. Renewals will similarly be based on the principle of one fee for one Class of goods/services, with additional fees payable for additional Classes of goods/services. There will also be additional fees payable for applications and renewals that are filed on paper as opposed to online.
Also included in the Proposal are new proposed service standards for issuance of Filing Notices and processing of Renewal requests. The Renewal request processing standard will be different, depending on whether or not the goods/services have previously been grouped into Nice Classes.
CIPO has asked for public input on the Proposal by July 5, 2016 and depending on what complaints might be received by then, an independent advisory panel could be appointed by August 15, 2016. We will publish further posts regarding the status of the Proposal as matters progress.
As discussed in our previous blog entry, after losing the battle in court over the requirement that businesses must add French language to English trade-marks displayed on signage outside their stores, in June 2015 the Québec government announced its intention to make modifications to Québec’s Regulation respecting the language of commerce and business (“Regulation”).
As recently reported in the media, the Québec government has just announced the proposed changes to the Regulation, the stated purpose of which is to ensure that commerce in Québec has more of a French language presence. The proposed changes require businesses to ensure that when trade-marks in languages other than French are used on exterior signage (as defined by the proposed rules), a French language component is displayed on the site as well. The proposed amendments set out the circumstances in which the new rules will apply, including when the trade-mark is displayed on interior signage that is intended to be seen from the outside, or when exterior signage is located in a mall or shopping centre complex.
The French language component may take the form of a slogan, a generic term or description, or other information concerning the products and services offered by the business. The proposed rules do not require that the French component be predominant over the non-French trade-mark, but they require that the French component be permanently visible in a manner similar to that of the non-French trade-mark being displayed, and be legible in the same visual field as the trade-mark.
A helpful illustration of acceptable and non-acceptable signage under the proposed changes can be found here.
A 45 day period for public feedback on the proposed amendments commenced on May 4, 2016. We will report again when there is a further update. In the meantime, brand owners using trade-marks in languages other than French in Québec should start considering how they will comply with the new French language requirements, assuming those requirements are passed into law, and whether their proposed strategy necessitates any changes to their current Canadian trade-mark portfolio.
In a recent decision of the Federal Court of Appeal (“FCA”), the FCA took the rare opportunity to consider an appeal from a section 45 expungement proceeding. In One Group LLC v Gouverneur Inc, the FCA reviewed the Registrar’s decision not to expunge One Group LLC’s (“One Group”) trade-mark registration for STK (the “Mark”) on the basis of non-use, as well as the subsequent Federal Court (“FC”) decision to overturn the Registrar’s ruling.
One Group operates high end restaurants using the Mark outside of Canada. In preparation for a new restaurant in Toronto, One Group registered the Mark in Canada. However, due to failed discussions with hotels and developers, a Toronto restaurant never materialized.
In due course, Gouverneur Inc. (“Gouverneur”) brought a section 45 proceeding, alleging that One Group failed to use the Mark in the three preceding years. The Registrar refused to expunge the Mark on the basis that there were special circumstances that excused the non-use, namely that the non-use was not in the control of One Group, and that there was evidence that One Group was close to coming to an agreement with a hotel chain which would see the Mark used in Canada.
Gouverneur appealed to the FC on the basis that the Registrar misunderstood or misapplied the test for special circumstances. The FC agreed and overturned the decision of the Registrar on the basis that it was not a reasonable finding that special circumstances excused the non-use of the Mark, and ordered the Mark expunged.
One Group then appealed to the FCA. In a relatively brief decision, the FCA allowed the appeal and reinstated the ruling of the Registrar.
This decision highlights a number of points:
- First, the FCA emphasized that deference must be given to the Registrar in expungement proceedings, as well as in those instances where the Registrar is applying its “home statute”. As a result, courts should not disturb the Registrar’s findings of fact except in those circumstances where such findings are clearly not correct.
- Second, it appears that there is a general willingness of the Registrar to preserve registrations. Hence, to the extent the Registrar makes factual findings in support of preserving a registration, the court’s deference to those findings on an appeal presents a potentially difficult hurdle to overcome.
- Third, this case is a reminder that there is a “special circumstances” exception to non-use which can be used to preserve registrations. The criteria for determining if “special circumstances” exist are:
– the length of time during which the trade-mark has not been used;
– whether the reasons for non-use were beyond the registered owner’s control; and
– whether the registered owner has a serious intention to shortly resume use of the trade-mark.
Whether special circumstances exist will be determined by the Registrar from the evidence. Such findings, as stated above, will be given deference by the courts.
With this deference in mind, the FCA found no error in the Registrar’s decision that justified judicial intervention, and restored the decision of the Registrar.
Since the Canadian Government announced massive changes to the Canadian Trademarks Act (the “Act”) in 2014, practitioners and other stakeholders in the trademark space have been anxiously awaiting its implementation.
Unfortunately we are all going to have to wait a little longer.
It is now expected that the amendments to the Act which have been passed but not yet implemented will not be implemented until sometime in 2018. This pushes out the implementation date again, from an original (and optimistic) implementation date of late 2015, and a revised implementation date of 2017, to 2018.
The implementation of the remaining amendments is expected to coincide with the Canadian Intellectual Property Office’s implementation of the Madrid Protocol, the Nice Agreement and the Singapore Treaty.
We will provide further updates here on the timeline for implementation as more information becomes available.
Following our post from July 2015, the Canadian Intellectual Property Office (“CIPO”) is now accepting trade-mark applications filed with goods and services classified using the Nice Classification system. As part of this process, CIPO has also updated the online Canadian trade-marks database, such that “Nice classification” is now a possible search field. In addition, the Canadian Goods and Services Manual has been updated to allow users to search for specific terms within all 45 Nice classes, and to cut-and-paste or import text containing a list of goods and services for proposed classification by the database.
Once the upcoming changes to the Canadian trade-mark regime come into effect, there will be a requirement to classify the goods and services claimed in an application into Nice classes, and to have that classification approved by an Examiner. For the time being, however, the classification of goods and services by an Applicant is entirely voluntary.
As another interim point of interest, where the Examiner does not agree with an Applicant’s classification of goods and services for a yet-to-be advertised application, CIPO will nevertheless advertise the application in the Trade-marks Journal if no other requirements and/or objections are outstanding – but without the Nice classification. Obviously, this will no longer be the case once the changes to Canada’s trade-mark regime come into force.
We will provide an update as soon as it becomes mandatory to classify goods and services in Canadian trade-mark applications. In the meantime, the ability to search all Nice classes and to view the expanded list of goods and services that are acceptable to CIPO is a welcome update.
In a milestone step towards harmonization of Canada’s trade-mark regime with most other developed countries, the Canadian Intellectual Property Office (CIPO) announced yesterday that starting this fall, it will accept trade-mark applications filed with goods and services classified using the Nice Classification system.
According to CIPO’s announcement, there will be changes to its website to take advantage of the use of Nice Classification. In particular, the Goods and Services Manual will be redesigned to facilitate classification of goods and services, and the search capability of the CIPO online database will be updated to allow for searching within specific classes.
Historically, Canada has not used the Nice Classification system when it comes to descriptions of goods and services. However, as part of the aforementioned harmonization process, Canada will accede to the Nice Agreement. As we previously reported, CIPO has already started the process of assigning Nice classes to terms in its database.
Happy Canada Day to all of our readers!