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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David Bowden is an Associate with Clark Wilson’s Intellectual Property group. David practices in the area of trademark prosecution and opposition. A member of the bar of both Ontario and British Columbia, he has experience in all types of intellectual property litigation.