2015/2016: Major change to trademarks registration in Canada: prior use requirement will be removed

trail_running_imgeUnder the prevalent Canadian law, a trademark can only be registered if it is currently used or if the applicant plans to use it. Applications based on the use of a trademark in Canada have to mention the date of first use in respect of the designated goods and services. The holder of a trademark registered and used abroad can also file an application in Canada without ever having used that mark there.

Once the new law, presently under discussions, becomes effective, the requirement for a declaration of use in Canada prior to the issuance of the certificate of registration will be removed. It will not be necessary to specify whether the claim is based on an existing or intended local use of the trademark.

The new law is expected to enter into force by end of 2015 or early 2016. Removal of the declaration of use requirement will prove beneficial to all pending registrations. However, anyone who applies for registration of a trademark in Canada must still intend to use it for all designated goods and services.

On the one hand, this change is a good thing because all issues surrounding dates of use will disappear at the application stage. In addition, the applicant will no longer have to require lengthy time extensions to start using the trademark for all the goods and services listed in the application.

On the other hand, since the registry will no longer provide information concerning the use of trademarks, it will be more difficult to determine whether a new trademark is available. This is an important consideration as it will still be feasible to claim acquired rights through use. In the event of a dispute between two applicants, an investigation will be required to determine who is genuinely the first user of the trademark and in respect of which goods and services.

The prospective amendment to Trademark Law relaxes the registration procedures of trademarks. The concept of use of the trademark is not ruled out yet. Instead, it remains critical as far as trademark rights are concerned. The principle remains unchanged: the first user, not necessarily the first applicant, retains rights over the trademark. It is actually the filing strategy which requires revamping: it is imperative to file a registration application for all potential goods and services at the soonest available opportunity.

To be continued…