Law Times

Law Times • February 1, 2016 Page 11 www.lawtimesnews.com Two years grace from Trademark Act changes? BY MICHAEL MCKIERNAN For Law Times T rademark owners and their counsel should sa- vour the final two years of the old Trademarks Act regime after the Canadian Intellectual Property Office an- nounced drastic changes to the act will not take place until at least 2018, according to a leading trademark lawyer. It's at least the second time that implementation of the con- troversial amendments has been put back since they received Roy- al assent in the summer of 2014. Stephen Harper's government received criticism from lawyers in the intellectual property com- munity at the time for pushing through the amendments as part of Bill C-31, an omnibus budget bill, without consulting inter- ested parties. "Right now, we're operating under a system that we know and understand very well," says Cynthia Rowden, the head of the trademarks practice group at in- tellectual property law boutique Bereskin and Parr LLP. "Not only that, but the in- formation that is collected as part of the registration process makes decisions much easier to take than they will be after the amendments are implemented." Rowden, who works out of the firm's Toronto office, says lawyers in the field are most concerned by the decision to drop the require- ment for use of a mark in Canada in order to get a trademark regis- tration in this country. Their fear is that this could clear the way for trademark trolls to begin registering marks as a way to squeeze payments out of brand owners, as well as a f lood of registrations by legiti- mate foreign businesses of marks never intended for use here, she explains. "Over time, the register is go- ing to get clogged, as it has done in the European Union, with trademarks that are not in use, and with no quick way to remove them," Rowden says. "Once the implementation takes place, there's going to be a lot of changes all at once, and the reality for businesses is that trademark searching and clear- ance is going to become much more uncertain, and likely more expensive." The measures, initially sched- uled for implementation in 2015, were first rescheduled to 2017, before the CIPO's latest an- nouncement of 2018 as the target date. Even that may be optimistic given the scale of the revisions to the Trademarks Act, accord- ing to intellectual property law- yer John Simpson, the founding partner at Toronto-based firm Shift Law. He says the uncertain- ty around the effective date has fuelled criticism of the changes. "It's hard to start advising cli- ents about strategies for legisla- tion without a clear idea of when it will be in force. If you started mak- ing recommendations to clients in 2014 based on 2015 implementa- tion, it might not look so good now when the law doesn't become real until 2018," he says. "I think that has frustrated a lot of prac- titioners." Many of the trade- mark changes in C-31 are aimed at bringing Canada into compli- ance with several in- ternational accords to which it has recently signed up: the Nice Agreement; the Ma- drid Protocol; and the Singapore Treaty. Signing up to the Madrid Protocol will make it possible for Canadian businesses to file a trademark reg- istration in as many as 100 Madrid-member countries and territo- ries at once, bypassing the need for local counsel that Canadian trademark owners previously needed when expanding inter- nationally. "That will hopefully result in much lower legal fees," Rowden says. LT FOCUS Let the experts help you to narrow your search and save you research time. 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