By Coleen Morrison, BSc., J.D.
Coleen Morrison is a registered Canadian Trademark Agent and a practicing Barrister and Solicitor at PCK. PCK is a trusted intellectual property consultancy for all businesses that creates and facilitates critical thinking and innovation for people looking for meaningful intellectual property advice.
Here are a couple of the many, many things trademark owners should be thinking about now.
Canada recently overhauled its Trade-marks Act, Rules and practices. This was ostensibly to allow Canada to become party to several international treaties but along the way legislators also managed to up-end the trademark system by removing any requirement for an applicant to claim use of its mark before a registration issues.
Currently in Canada, trademark applicants may generally rely on three bases. Intent to use the mark in Canada, registration and use of the mark abroad or use of the mark in Canada (while there is an additional basis of making known, the accompanying legislation was so restrictive that it was rarely of use to Applicants). While bases can to some extent be mixed and matched, there are some restrictions and requirements. For example, under the trademark laws now in place, if an Applicant has used its mark in Canada, that use must be claimed in the Application, as failure to have done so could lead to successful Opposition – resulting in refusal of registration. Applicants relying on the basis of an intention to use the mark in Canada must file a Declaration of Use before the application may advance to registration. Foreign use and registration based applications require an ordinary copy of the foreign registration before publication.
Applications Based on Intent to Use Currently Awaiting Registration
After June 17, 2019 all pending applications awaiting the filing of a Declaration of use will immediately proceed to Registration. Some of these will have been in existence for many years with Applicants having satisfied the Registrar that there are good reasons to support further extensions beyond the usual six years after filing. That the product associated with the mark is awaiting regulatory approval was the most usual justification in support of such a request.
Certain industries such as the pharmaceutical field are most likely to be affected by this change since the typically long research and approval cycles mean these marks remain pending for longer periods. Why is this relevant? Three years after registration these marks become susceptible to cancellation on the basis of non-use. Therefore, companies who anticipate that marks with pending applications will not be put into use until more than three years from now would be well advised to consider re-filing now to ensure it is impossible for another entity to apply for the mark (or a confusingly similar mark) thereby obtaining rights in the period between the cancellation of the old mark and filing date of the new. Filing between now and June 17, 2019 has the additional advantage to Applicants of having no class fees payable AND by the time the application reaches the registration stage, no registration fees will be payable either.
Applications Claiming Use in Canada and Awaiting Registration
There is generally very little difference between registrations claiming use in Canada and those relying instead on foreign use and registration. The obvious advantage associated with the former involves the presence of a manifest use claim on the register. This undoubtedly is a factor when others are clearing possible marks. A registration with a lengthy recitation of goods and services based only on foreign use and registration is always suspect in terms of whether this is a true obstacle. However, a recent registration with a use claim, especially if it covers relatively a relatively narrow specification of goods and services, will be immediately perceived as a serious concern. As such, a registration with a recent use claim has greater value as a deterrent against others adopting a similar mark.
There is other tangible benefit associated with a registration containing a use claim – its value in Opposition. The Board has long held that in instances wherein a registrant has pleaded a likelihood of confusion with its mark, but has not filed evidence to prove that use, a finding that the Opponent had de minimis use is reasonable. This can and has resulted in victory for Opponents. This is particularly the case when the Applicant has not used or promoted its mark and as such the statutory criterion of the length of time in which the marks have been used will be found to weakly favour the Opponent. If the marks are similar in appearance, sound or idea suggested and the goods and services identical or related, such an Opposition is likely to be decided in favour of the Opponent. This can make a use-based registration a potent weapon in a Trademark owner’s arsenal. This is particularly true if the trademark owner is a small or medium sized business that would rather spend resources on research and development or product advertising than trademark Opposition proceeding but that recognizes the importance of keeping the register clear of similar marks. As such, if it is possible to obtain a registration containing a use in Canada claim before June 17, 2019 it is strongly advisable to do this. Absent such a registration, companies will have no choice but to engage in the expensive and time-consuming process of collecting and filing evidence to demonstrate use, not to mention expose itself to cross-examination, should it wish to Oppose. Unfortunately, with examination times of one year there is no hope of filing now and achieving such a registration. However, owners with a pending application having a use claim would be well advised to rush to the registration stage, ensuring the Registration is in hand before June 17, 2019.
These are but two examples of the myriad issues that the new legislation has created for existing and prospective trademark owners. Now is an excellent time to take stock of a trademark portfolio with a view to ascertaining what can be done to shield owners from the more detrimental aspects of the new legislation. Please contact a PCKIP trademark expert for more detailed and targeted advice.