Page 12 - CCCA 243725 Magazine_Winter 2015

{ PRactice ManaGeMent }

CAnAdiAn trAdemArk lAW:

prepAre For CHAnge

By Mark Evans and Keltie Sim Luft

Canadian trademark law and practice are set for the most
dramatic change in over 50 years. Legislation, in the form of

Bill C-31, has created a mixed bag of risks and opportunities for
Canadian businesses. While implementation will likely not occur
before 2018, in-house counsel should be taking a number of
steps now to best protect their companies.

Changes to trademark use mark, especially those based in Europe
requirements and other regions and countries, com-
Canada has always been a use-based juris- monly fle trademark applications cover-
diction, and the determination of which ing a breadth of goods and services well
party frst used its mark in Canada will beyond those that will ever be commer-
remain important in contentious pro- cialized. With Canada abolishing use as a
ceedings such as trademark infringe- trademark registration requirement, the
ment litigation and trademark opposi- Canadian trademark register will soon be
tions. However, under the new law, it will cluttered with an infux of registrations
no longer be necessary to use a mark in covering a wide range of unused goods
Canada or elsewhere in order to obtain a and services.
Canadian trademark registration. This is Additionally, the Canadian trademark
the most dramatic change, and its impact register today provides information as to
should not be underestimated. whether an application was fled on the
basis of use in Canada (and since when)
What is the practical effect? or whether the use of the mark was in
As use will no longer be required to ob- a specifed foreign country. Once the
tain a Canadian trademark registration, changes are implemented, this informa-
the registration process will generally be tion will disappear, and brand owners
faster for brand owners. Unfortunately, will struggle to determine whether they
this will also open the door to registra- were the frst to use a mark in Canada and
tions being obtained by trademark trolls whether contentious trademark proceed-
and squatters who have no use of a mark ings should be launched. While the risks
and whose sole intention is to extract pay- can be minimized in some cases through
ment from brand owners. suitable use investigations, it is not dif-
Also, many legitimate brand own- fcult to contemplate many situations,
ers who do not require use of a trade- particularly involving foreign owners of

12 CCCA MAgAzInE | WIntEr 2015 HIVEr