Frequently asked questions: Legislative Amendments to the Trade-marks Act

Why is the Government proposing to introduce bad faith grounds of opposition/invalidity?

Misuse of the trademark regime prevents businesses from efficiently registering and using their trademarks, increases costs and endangers businesses’ hard-earned reputations. An example of such a misuse is a person registering a trademark without intending to use it, or registering it to extract payments from those legitimately in the market (i.e., trademark squatting). The amendment provides an additional ground and more clarity for businesses to challenge unfair applications and registrations.

What is the difference between bad faith and the “was not using” or “did not propose to use” ground of opposition?

The new ground of opposition could include scenarios where the applicant has, in fact, used the trademark. For example, in cases where the applicant’s actual use is merely for the purpose of extracting value from a business desiring to register or continuing to use its trademark (i.e., “trademark squatting”).

Why is the Government proposing limits on enforcement without use?

Use was, and continues to be, the foundation of Canadian trademark law and paramount for the enforcement of trademark rights in Canada, the United States and other common law jurisdictions. This amendment ensures that registered trademark owners use their trademarks in the Canadian marketplace before attempting to enforce their registered rights in court.

Why is the prohibition on enforcement for non-use limited to 3 years?

After three years, a defendant may commence a summary section 45 cancellation proceeding to have a trademark expunged from the register if the owner is unable to show that the mark has been used in Canada in the three years before the commencement of the proceeding.

Why is the Government altering the conduct of various proceedings?

Abusive practices impair the efficiency and effectiveness of proceedings before the Trade-marks Opposition Board (TMOB) and increase costs for businesses. For example, the appellant can currently automatically introduce new evidence on appeal to the Federal Court of a TMOB decision, even if that evidence was available at the opposition proceeding. This has been called “dual litigation”, and is both inefficient and potentially abusive, particularly to SMEs. There have also been instances of parties before the TMOB employing bad faith practices and drawing out the duration of the proceedings for strategic purposes.

Why is the Government creating a way to cancel official marks?

Good faith users will sometimes be prevented from registering their trademarks due to the presence of an “official mark” that is invalid because the owner of the official mark (the public authority) does not qualify as such, or simply no longer exists.

Why did Canada decide to join the Madrid Protocol and other related international treaties?

By ratifying these treaties, Canada will be joining our trading partners in a system that allows Canadian businesses to access common international trademark registration processes – one form, one language, one fee, and protection in over 100 countries. This will make registration of trademarks easier for businesses, reduce costs over time and enable our innovators to take their products global faster and easier. Similarly, it will ease the process for foreign applicants to register their trademarks in Canada, giving consumers more choice.