Entering the Twilight Zone Between Institution and Innovation: Trademark Improvement Initiatives

Profession:Borden Ladner Gervais LLP

By Mary Jane Lemenchick and Kathleen Lemieux (Ottawa)

The last fundamental revision to Canadian trademarks legislation was enacted in 1953 and came into effect in 1954 in the Trade-marks Act. It brought with it, amongst other things, the possibility to transfer a trade-mark with or separately from the goodwill of the business associated with it and introduced the registered user provisions which permitted the licensing of trade-marks. Since 1954, very few amendments have been made to the Act. The Intellectual Property Law Improvement Act came into force in 1993 and most notably abolished the registered user regime in favour of Section 50 as it is known today.

For the past few years, the Canadian Intellectual Property Office ("CIPO") has been assessing the necessity for a number of improvements to current legislation. In response to new trends and considering that there have been legislative amendments to trade-mark legislation by the United Kingdom, Australia and the United States, CIPO has set down proposals for modernizing certain sections of the Canadian Trade-marks Act to account for changing realities of international commerce. These improvements are intended to modernize the Canadian Trade-marks Act and would, it is proposed, "enhance Canada's competitiveness in the domestic and global marketplaces". On February 24, 2005 CIPO formally invited the intellectual property profession to comment on its proposals for the "Modernization of the Trade-marks Act and Regulations". Some of the more significant proposals for improvement are discussed below.

An initial effort towards incorporating 'new trends' in Canadian trademark legislation is the proposal for Canada's adherence to two Treaties administered by the World Intellectual Property Organization (WIPO), namely, the Protocol Relating to The Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) and the Trademark Law Treaty (TLT). Canada is conspicuous by its absence in both cases.

As applied to Canada, the Madrid Protocol would give applicants for Canadian trade-marks the possibility to have trade-marks protected simultaneously in several countries (International Registration) by filing a single application through CIPO. Adherence to the Madrid Protocol would require some administrative changes within Trademarks Branch of CIPO and certain amendments to the Trade-marks Act, including the removal of the current requirement by applicants to confirm use prior...

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