The Long and Winding Road – CIPO’s Ongoing Quest for Major Changes to the Trade-marks Act


At a recent International Trademark Association (“INTA”) Roundtable held in Vancouver, BC (the “Roundtable”), a representative from the Canadian Intellectual Property Office (“CIPO”) commented on a number of changes that CIPO has proposed to Canada’s Trade Marks Act (the “Act”). The Roundtable followed on a conference call that CIPO hosted in June of 2010 concerning ideas for the modernization of the Act. That conference call itself followed a Consultation and request for comments by CIPO in late 2009 to provide proposals relating to the proposed implementation in Canada of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol“) and the Singapore Treaty on the Law of Trademarks (“Singapore Treaty“). Both INTA and the Intellectual Property Institute of Canada put forward submissions in March of 2010 in response to CIPO’s request for comments.

While time will tell the extent to which these proposals become reality, some of the ideas put forward may have a significant impact on domestic practice, including:

  • Registration and Use Abroad Claims – CIPO reiterated its position that use should remain a core concept in the Act. CIPO believes that the Act currently creates an inequity that puts domestic applicants at a disadvantage to foreign applicants, in that it permits foreign applicants to register a Mark without any requirement for use of the Mark in Canada, provided there is both registration and use of the Mark abroad. CIPO is considering whether to eliminate this provision from the Act.
  • Not without distinctive character in Canada – CIPO is considering whether to remove provisions permitting registration of a Mark that is otherwise unregistrable (for example, because it is clearly descriptive of the character or quality of the claimed goods or services) if the Mark is registered and used abroad and is not without distinctive character in Canada. Again, CIPO views these provisions as providing foreign applicants with an advantage over domestic applicants, who must meet a higher bar in such circumstances, namely evidence that the Mark has acquired distinctiveness throughout Canada.
  • Use not required before registration – If Canada adheres to the Singapore Treaty, the requirement to provide a date of first use or a declaration that the Mark has been used since the date a Proposed Use Application was filed would potentially be eliminated for all Canadian applications. Under the Singapore Treaty, applicants/registrants are not required to prove use until three years after registration. In a related vein, the Act would need to be amended so that summary cancellation proceedings for non-use could not be commenced for at least five years after registration.
  • Use at time of renewal – CIPO is considering a requirement that either evidence of use of a Mark or a declaration of use be submitted at the time a registration is renewed.
  • Nice classification – Adoption of the Singapore Treaty would require the adoption by Canada of the international classification of goods and services under the Nice Agreement (“Nice“). CIPO is considering whether the applicant or CIPO should be responsible for making such classifications. However, even if Nice is adopted, CIPO has suggested that current provisions requiring a specific description of goods and services in ordinary commercial terms would remain in the Act, and that the test for confusion between competing Marks would not change. In other words, the adoption of Nice would be on top of and essentially peripheral to the current system of classifying goods and services.
  • Associated Marks – CIPO is considering changing the provisions of the Act dealing with associated Marks, such that it would be up to the applicant rather than CIPO, to decide whether or not to associate any similar Marks owned by that Applicant. Under the current system, Associated Marks cannot be assigned separately, only as a group, so the classification of one or more Marks as being “associated” has potentially significant ramifications for management of trade-mark portfolios.
  • Consent Agreements – CIPO is also considering whether to give greater deference to consent agreements between parties with identical or similar Marks. Currently, consent agreements are only one factor to be considered by the Examiners when determining likelihood of confusion, and are not determinative of the issue.
  • Non-Traditional Marks – Currently in Canada, protection for sound, scent, holograph and colour (alone) Marks is problematic in light of Section 30(h) (requiring the drawing of a Mark that is not a word mark) of the Act. The Singapore Treaty requires that member countries provide protection for such non-traditional Marks and CIPO is therefore concerned about what amendments would need to be made to the Act if the that treaty is adopted. CIPO issued, on October 8, 2010, a Practice Notice consultation, seeking input on the requirements for registration of motion and hologram Marks.
  • Divisional Applications – CIPO is considering whether to permit divisional applications, which is a requirement under the Madrid Protocol.

The timing for all of the above remains unclear. While CIPO itself is apparently keen to move forward with many of these changes, the political will does not appear to be in place. The priorities of Canada’s minority federal government, in terms of intellectual property, are currently copyright reform and an anti-spam Bill. While this may sound like a broken record (anyone still remember those?) to Canadian practitioners and others who follow these developments, it could be several years before any of the above changes see the light of day.