Canadian Trademark Updates

February14

Canadian Trademark Updates

Recently, the Canadian Intellectual Property Office announced that anticipated changes to the Trade-marks Act are expected to come into force in early 2019.

A few of the main changes to the Trade-marks Act include the changes to the filing fees based on class, the ability to register non-traditional marks, and that use will no longer be a requirement for registration.

~Tuesday, February 14, 2017~

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As of November 3rd, the Quebec government announced that the new signage regulations requiring the French language on all outdoor signs in Quebec will come into effect on November 24, 2016. This means that all outdoor signs containing a trademark that does not include French must now include in French either the slogan or a description of the product or service. All new outdoor signage must comply by the 24th of November and all existing signage will have 3 years to comply with these new regulations. For more information please visit the Quebec website.

~Monday, November 7, 2016~

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It is official—patent and trademark agents in Canada now have privilege. On Friday, June 24th, 2016, the recent amendments made in Bill-C59 to the Patent Act and Trademark Act, one of which grants privilege to patent and trademark agents, came into effect. This means that confidential communication between patent and trademark agents and their clients is now protected from disclosure in court granted that it means the criteria. For more information please see Bill-59 or visit the Intellectual Property Institute of Canada’s website.

~Monday, June 27, 2016~

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In 2014, the Trade-marks Act was amended in order to comply with international treaties and streamline procedures with various other countries. As a result of these changes, the existed fees are scheduled to change. The proposed trademark fees are as follows: the current application fee and registration fees will be merged into one fee. The current renewal fee will increase due to the increased cost for following the Nice Classification and the time period of protection will be reduced from 15 years to 10 years. Furthermore, an additional fee-per-class will be implemented. The follow chart breaks down the current vs: proposed fees.

Current Fee Proposed Fee
New Application
Registration Fee $200 —–
E-filing (for 1st class) $250 $330
Paper filing (for 1st class) $250 $430
Fee for each additional class —– $100
Renewals
E-filing (for 1st class) $350 $400
Paper filing (for 1st class) $350 $500
Fee for each additional class —– $100

These changes are currently open for feedback until July 5, 2016. For more information please visit CIPO’s website.

~Monday, June 13, 2016~

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On Wednesday, May 4, the province of Quebec posted draft regulations in regards to the Charter of the French Language. These regulations will require that signs and posters containing trademarks in any language other than French, which are displayed outside, in the province of Quebec to now contain the presence of French. Businesses have 3 years to update existing signs and posters to meet the new regulation. For specifics regarding the regulations and the few exceptions please see the Draft Regulations.

~Monday, May 9, 2016~

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Metatags and Trademark Infringement–Part 2

 

As previously noted, in March 2015 the Federal Court of Canada had to consider the implications of copyright and trademark infringements when it comes to the use of metatags in the case of Red Label Vacations Inc v 411 Travel Buys Limited, 2015 FC 19.  The case was initially dismissed as the Court did not view this instance as being a copyright or trademark infrigement.  When appealed, the Federal Court of Appeal held to the initial judge’s ruling, in 2015 FCA 290, but stated:

“…in some situations, inserting a registered trade-mark (or a trade-mark that is confusing with a registered trade-mark) in a metatag may constitute advertising of services that would give rise to a claim for infringement”.

This statement highlights that there will be possibility for infringement when it comes to metatags in future claims in Canada.

~Tuesday, January 19, 2016~

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At the recent Annual Meeting for the Intellectual Property Institute of Canada, on October 16th,  Johanne Bélisle, CIPO’s Commissioner of Patents, Registrar of Trademarks, and Chief Executive Officer, commented that the implementation date for the changes from the Madrid Protocol, the Nice Agreement and the Singapore Treaty are now expected to come into effect in 2018.  In preparation for the changes brought about by the Nice Agreement, CIPO has already made changes to their application process enabling applicants to use specified terms and assign Nice Classes to their goods and services.

~Monday, October 26, 2015~

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Canada is currently negotiating with 11 other counties (Australia, Brunei, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, Vietnam, and the United States) in the Trans-Pacific Partnership (TTP) in hopes of eliminating tariffs on a variety of products. In regards to how this new agreement will impact our trademark system, the Canadian Government states that this deal:

“Provides protection against infringing use of trademarks, such as brand names and symbols; Fosters transparent and efficient rules and procedures across the TPP region; Is in line with Canada’s existing regime; and Supports Canada’s progress to accede to the Madrid Protocol and Nice Agreement.”

Before this agreement can come into effect it still must be approved and is expected that it will be brought forth in the next session of Parliament. 

~Tuesday, October 6, 2015~

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As noted previously, as technology advances and evolves so must our laws and regulations.  This is the case when it comes to Canada’s trademark laws in regards to using keywords for online advertising.  Currently, advertisers can pay money to have services, such as Google AdWords, run their adds with the use of specific keywords.  In the recent case of Vancouver Community College v Vancouver Career College (Burnaby) Inc, 2015 BCSC 1470the plaintiff, Vancouver Community College, claimed that the defendant, Vancouver Career College, violated their trademark by using the keyword VCC for their online advertising.  It came down to the application of the Law of Passing Off stating: 

[180]     To impose liability on the defendant for the tort of passing off the plaintiff must satisfy me that:

a)         it enjoys goodwill attached to the educational services it provides;

b)         its services have acquired a distinctiveness in the marketplace;

c)          the defendant has caused confusion by intentionally or otherwise misrepresenting its services as those of the plaintiff; and

d)         the plaintiff is likely to suffer damage as a result of the defendant’s misrepresentation. (2015 BCSC 1470)

The Supreme Court of British Columbia came to the following conclusion: 

In my view [Supreme Court of British Columbia], this lawsuit, … has been motivated by a concern that its own inability to invest the necessary funds and expertise to create a sophisticated online advertising program leaves it at a competitive disadvantage in the marketplace in comparison with the defendant. Passing off is a cause of action which permits a court, in appropriate circumstances, to compensate a plaintiff for unlawful competition by a defendant. It is not intended to be used by a plaintiff to handicap a defendant that has developed a more effective means of marketing its goods and services than has a plaintiff. (2015 BCSC 1470)

In this ruling, the Supreme Court found that using the keywords of the competition did not violate the plaintiff’s trademark as misrepresentation did not take place; rather, it was a savvy way for the defendant to be competitive.

~Monday, August 31, 2015~

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On May 7, 2015, Bill C-59 was introduced in parliament to implement provisions noted in the Economic Action Plan 2015. One of the significant changes that this bill puts forth in regards to intellectual property is to provide statutory privilege to patent and trademark agents.  This provision enable communications between registered Canadian patent agents and trademark agents, and their clients, to be privileged and confidential, where the communication is for giving or seeking advice for the protection of an invention or any trademark matter. Based on these conditions, this privilege will enable agents to maintain confidentiality with their clients by preventing disclosure in civil, criminal, or administrative legal actions.  These amendments come into effect 12 months after the Act receives royal assent.  It appears as though the Government would like to pass this Bill prior to Parliament rising for summer recess and so we may see it granted royal assent as early as June 2015.  Privilege will be retroactive, with the exclusion of any legal action that has already commenced.

~Tuesday, May 12, 2015~

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On  April 21, 2015 the Canadian Government released the federal budget plan for 2015. This budget proposes to amend Canada’s Patent ActTrademark ActIndustrial Design Act, and Copyright Act in order to be more current with international intellectual property trends, particularly those of the other common law countries (Australia, New Zealand, and the United Kingdom). The Government states: “Economic Action Plan 2015 proposes to further modernize Canada’s intellectual property framework to keep pace with internationally recognized best practices” (Economic Action Plan 2015, Page 113). These amendments will influence communication between agents and their clients. As well, one of the proposed changes is to be able to extend deadlines in the event of majeure events such as floods and ice storms, like the major ice storm that hit eastern Ontario and western Quebec in 1998. These will be welcome changes.

~Monday, April 27, 2015~

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The anticipated date for the proposed amendments to the Trademarks Act to come into effect is now later than previously anticipated.  The proposed changes were open to the public for comment in the fall of 2014. They are now expected, according to CIPO, to be pre-published in the Canada Gazette late in 2016.  The earliest the changes to the act and rules come into effect would typically be 2 months after publication in the Canada Gazette. For more information please see the CIPO website.

~Friday, April 24, 2015~

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Metatags and Trademark Infringement: Case Dismissed

 

As technology advances and evolves so must our laws and regulations. Recently the Federal Court of Canada had to consider the implications of copyright and trademark infringements when it comes to the use of metatags. Metatags are hidden words or phrases used in a website’s source code that enable it be found by search engines.  In the recent case, Red Label Vacations Inc v 411 Travel Buys Limited, 2015 FC 19, trademarked phases of Red Label Vacations Inc. were used in the meta tags of their competition, Travel Buys Limited. Should this count as a copyright and trademark violation even though these phrases are not visible to the public eye? Does it cause confusion in regards to the brands?

 

The claims for copyright and trademark infringement by the plaintiff, Red Label Vacations Inc., was dismissed by Justice Manson.  He commented:

 

“The use of metatags in a search engine merely gives the consumer a choice of independent and distinct links that he or she may choose from at will, rather than directing a consumer to a particular competitor…Even if a searcher is looking for the website connected with a particular trade name or trademark, once that person reaches the website, there must be confusion as to the source of the entity or person providing the services or goods. If there is no likelihood of confusion with respect to the source of the goods or services on the website…” 2015 FC 19

The case was dismissed as the Court did not view this instance as being a copyright or trademark infringement. However, what will the implications be for future rulings in this area? It appears as though it may be difficult in the future to establish a case of copyright and trademark infringement when it comes to metatags in Canada.

~Tuesday, March 17, 2015~

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On December 9, 2014 Bill C-8, the Combating Counterfeiting Products Act, received royal assent.   Bill C-8 contains trademark amendments relating to the Canadian Intellectual Property Office (CIPO) and the registration of trademarks that are not included in Bill C-31, the Budget Implementation Act. The government is consolidating the overlapping provisions between the two bills.  The implementation of the Bill C-8 trademark amendments will be tied to the implementation of Bill C-31.

See CIPO’s Questions and Answers Page or the News Release: Protecting Canadian Consumers

~Thursday, December 11, 2014~

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On Monday, December 8th, Bill C-8, Combating Counterfeit Products Act, passed its third senate reading. For more information click here.

~Wednesday, December 10, 2014~

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In order to comply with the Singapore Treaty, the Madrid Agreement and the Nice Agreement, the Trade-Marks Act has been updated and thus a series of amendments to the regulations have been proposed. These amendments are currently open for public consultation until November 30th, 2014. For a detailed list of the proposed amendments click here.

~Wednesday, October 8, 2014~

 

 

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