Wares my Hyphen? Gone for Goods.

Proposed housekeeping changes welcome, but the spotlight belongs to troubling fundamental shift.

By Andriy Holuk, Student-at-Law – WISES
Title by Robert J. Wise, Lawyer and Trademark Agent – WISES

Trade-mark law in Canada may soon undergo significant overhauls.  The new Bill C-31 Economic Action Plan 2014 was tabled by the Federal government on March 28, 2014 and includes some significant amendments to the Trade-marks Act.  Many of these amendments attempt to harmonize Canadian trade-mark law with international trade-mark regimes and treaties, such as the Madrid Protocol and the Singapore Treaty.

One change found in the bill is a revised spelling of “trade-mark.” The bill proposes that the hyphen be dropped in favour of adopting the international spelling, “trademark”.  Additionally, the term “wares” would be replaced with the UPTSO word “goods”.  For Canadian trademark practitioners who deal with USPTO, this certainly will be a welcomed amendment.  There will certainly be less confusion on word usage when drafting applications and client communications.   (If the bill proposed changing the term “Application Number” to “Serial Number”, the writer would be even happier.)

Another major amendment is the term of protection.  The bill proposes that trade-mark protection would be reduced to 10 years from the 15 years afforded by current Canadian trade-mark law.

Any mark that consists of a predominantly functional feature will not be registrable under s. 12(2) of theTrade-marks Act.  Furthermore, any mark which unreasonably limits the development of any art or industry would be expunged.  This is a positive amendment ensuring that marks will not act as inappropriate impediments to the development of new brands and products.

A trade-mark will be defined as a sign or combination of signs that is used by a person for the purpose of distinguishing their goods or services from others.  A “sign” under the amended s. 2 would be expanded to include words, personal names, a letter, a numeral, a colour, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign.  This greatly expands what can be registered and could open the door for a wide range of new dynamic marks.

As much as we would welcome the changes summarized above, we are concerned about a controversial amendment relating to use.  According to Bill C-31, any applicant would be able to file a Canadian trade-mark application without filing a declaration of use for proposed use marks.  While the test for entitlement of a mark will still be based on the filing date or date of first use, controversially this amendment could potentially mean that an applicant could register a trademark without actually using the mark in Canada.

One of the core pillars of trade-mark law in Canada and the United States is that use is a pre-requisite to registration.  It is of little surprise that many practitioners are troubled by this proposed amendment, including WISES.

Should the bill retain this controversial amendment it remains unclear how trade-mark law in Canada will function without its one of its core principles.  Britain also faced a similar circumstance when its trade-mark regime was harmonized with European Union law.  As eloquently put by the late Sir Hugh Laddie of the British High Court Judge and chair of Intellectual Property at University College London, “a trademark is only of use if it is a good mark, in the sense of being truly registered, and equally only if it is used! Otherwise, it’s fairly useless, except if it registered, to make life difficult for others in the market.”   [Use and Intention to Use in EU Trademark Law” delivered by Sir Hugh Laddie at University College London http://www.ucl.ac.uk/laws/ibil/docs/Laddie_Lecture_2011_paper.pdf on June 22, 2011.]