Law Times

Page 10 September 25, 2017 • Law timeS www.lawtimesnews.com Concerns raised repeatedly Rush to register trademarks before 2019 BY MICHAEL MCKIERNAN For Law Times B usinesses are rushing to register trademarks ahead of what one lawyer calls the biggest shakeup to the regime in decades. Controversial amendments to the Trade-marks Act, ex- pected to take effect in 2019, will eliminate the requirement for applicants to show use of a mark in Canada before they can get registration in this country. Cynthia Rowden, head of the trademarks practice group at in- tellectual property law boutique Bereskin & Parr LLP, says the demise of the use requirement is "huge," calling it the most sig- nificant change to the law since the 1950s. "Use has been the basis for trademark rights for basically as long as Canada has been a coun- try, whether through statute or common law," she says. "So taking it out is going to have a big impact on the mean- ing of registration as well as on the risk analysis for brand own- ers going forward." Rowden, who works out of the firm's Toronto office, says companies fear the looser rules could clear the way for trade- mark trolls to start registering marks as a way to squeeze pay- ments out of brand owners. And she says there are signs that a predicted f lood of defen- sive applications by legitimate businesses for marks they never intend to use has already begun, well in advance of the changes taking effect, judging by the Canadian Intellectual Property Office's database of all registered trademarks and outstanding ap- plications. "If you search it, you'll see ap- plications in there where they list 75 pages of goods and services. I don't think they're planning to use the trademark for all of them; in fact, for some applications, it looks like they've just gone through the list of accepted goods and services and filled them all in from A to Z," Rowden says. "The plan seems to be that if they can keep the application pending until 2019, then they can register the trademarks for all goods and services without showing use. It's an attempt to significantly broaden their rights." She says prospective trade- mark holders have an additional incentive to claim a wide variety of uses for their marks because of this country's current f lat-fee charging for applications. That is likely to end with the upcoming enacting of the legis- lative changes, because they will also ensure Canada's compli- ance with the Nice Agreement, an international accord that standardizes the classification system for goods and services covered by a particular trade- mark registration. At that time, it's expected that applicants will have to pay sepa- rate fees for each of the goods and services listed in the 45 dis- tinct, internationally recognized groupings laid out by the Nice Agreement. "If you file now with your huge list, all you have to pay is the regular fee, which is already low by any measure," Rowden says. In a recent letter to the fed- eral government, the Canadian Bar Association's national intel- lectual property law section also raised concerns about the poten- tial prevalence of overly broad marks in the absence of the use requirement, known in the in- dustry as "cluttering." It noted that since the Trade- marks Act changes received royal assent in 2014, the number of applications waiting to be reg- istered has ballooned to almost 70,000 from 40,000. "The more cluttered the reg- ister, the more difficult it is to provide quality clearance opin- ions for the adoption and use of new marks. Even if there is a perception that a registration is overbroad, businesses may hesi- tate to launch a product 'at risk,'" the letter reads. Claiming the benefits of scrapping the use requirement will be outweighed by the costs and burdens of such a move, the section urges the government to postpone implementation until "all stakeholders have an op- portunity to fully explore trade- mark policy options that achieve our common goal — an effective and efficient Canadian trade- mark system." But Rowden says she doesn't rate the chances of an about-turn from the federal government, despite the change in leadership since the amendments were first introduced in Parliament. They arrived to an immedi- ate howl of protest for the way Stephen Harper's administra- tion pushed them through as part of Bill C-31, a 2014 omnibus budget bill, without consulting interested parties. "Lots of companies submitted reports raising concerns about this, as well as professional groups and academics," Rowden says. "But the impact of all the com- mentary was nil. Between the bill's first reading and its passage, not a single comma changed." Although those concerns have been raised repeatedly since by lawyers and others in the in- tellectual property community, Rowden sees no sign they have had any more impact on Justin Trudeau's Liberal government. But Stephanie Vaccari, part- ner in the intellectual prop- erty practice group at Baker and McKenzie LLP in Toronto, says the reaction to the changes hasn't been universally negative. A good chunk of her prac- tice involves representing inter- national companies that want to add Canadian rights to their global IP portfolio. "They're quite excited, be- cause it puts Canada in sync FOCUS Stephanie Vaccari says amendments to the Trade-marks Act will provide additional tools that will help tackle potential misuse of the application process by trolls. See Demise, page 12 Lots of companies submitted reports raising concerns about this, as well as professional groups and academics. But the impact of all the commentary was nil. Cynthia Rowden In-class and online programs recognized by Law Societies Executive Education to Navigate the Canadian Legal Landscape Visit Lexpert.ca to find out more NEWLY LAUNCHED Join our 55,000 monthly visitors and read award-winning content across any device. www.canadianlawyermag.com We've redesigned our website for improved navigation and easy access to the latest in legal news, features, digital editions, video and more. A FRESH LOOK FOR YOUR MOST TRUSTED LEGAL CONTENT Untitled-3 1 2017-09-20 10:21 AM

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