Legal framework
National law
Major amendments to the Trademarks Act were passed in 2014, partially to facilitate implementation of the Nice Agreement, the Singapore Treaty and the Madrid Protocol. Most notable among these amendments is the elimination of use as a registration requirement. The amendments received royal assent, but have not yet been implemented. The latest projections suggest that implementation could take place in 2019.
To address concerns regarding adequate remedies to deter counterfeiting in Canada, the Combating Counterfeit Products Act was enacted in January 2015. It provides for new border detention provisions (by a written request for assistance submitted to the Canada Border Services Agency), additional criminal penalties for counterfeiting and a broadened definition of 'trademark infringement'. Full details on detentions under the new provisions are not public, but counterfeits of several major brands, particularly in the fashion industry, have been detained.
New provisions passed in 2016 now ensure that trademark agents have privilege for communications relating to trademark protection.
Provincial laws
Canadian provinces generally have legislation regarding corporate names and trade names. The province of Quebec has specific legislation requiring use of the French language in business, including French trademarks, unless marks qualify as 'recognised marks' under the Charter of the French Language. The regulations enacted under the charter, that came into force on November 24 2016, also mandate the use of French in generic business descriptions on all signage.
International treaties
Canada is already signatory to the Paris Convention for the Protection of Intellectual Property. Implementation of the amendments to the Trademarks Act will be followed by implementation of other treaties, including the Nice Agreement and the Madrid Protocol.
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This article first appeared in WTR Yearbook 2017/2018: A global guide for practitioners, a supplement to World Trademark Review.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
