The Good…  The Bad…  and The Ugly

The Good…

While there are several good amendments made by the Bill to the Trademarks Act,  one significant positive change is the broader definition given to a trademark.  The amended definition of a trademark is for a sign or combination of signs which include a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent a taste,  a texture and positioning of a sign.

The Bad…

The amendments eliminate the long standing requirement that a trademark must be used by the applicant in Canada or abroad prior to registration.   Trademark rights are currently acquired through use of the trademark and not merely by registration.  Should a trademark right acquired through registration and non use be enforceable against a person who first uses the trademark in Canada?   Some of our more learned professionals have postulated that should this Bill become law, then this trademark registration system that does not require trademark use prior to registration may be open to a constitutional challenge.  Is Canada becoming a first to register system?

The Ugly…

Should this Bill be enacted as presently framed for Trademarks, Canada then becomes a country that permits non-practicing entities to acquire nationally enforceable trademark rights at the potential and problematic expense of practicing entities.

Misc

The Bill introduces amendments intended to harmonize Canadian trademark application and registration practice with the Nice Agreement and the Singapore Treaty.  The bill prepares Canada for the Madrid Protocol.  These treaties have both their good and bad points for the Canadian Trademark applicants.

This BILL received Royal Assent on June 19, 2014.  This bill will come into force at a date to be determined later after the Trademark Regulations have been revised.