Will New Trademark Regime Raise The Bar?

The new Trademarks Act's registration requirements and provisions on distinctive marks look set to have a significant impact on how pharmaceutical companies manage their trademark strategies

Canada continues to await implementation of amendments to the Trademarks Act set out in Bill C-31, the Economic Action Plan 2014 Act (No 1). The bill received royal assent in June 2014 and is expected to be implemented in 2018. The stated goal of the amendments is to bring Canada into line with international practice, allowing it to accede to the Madrid Protocol, the Singapore Treaty and the Nice Agreement. The legislative amendments are likely to present both benefits and challenges for applicants in all industries, with the pharmaceutical industry being no exception.

Dispensation of use as registration requirement

The most notable change to be introduced by Bill C-31 - and the one that has received the greatest amount of attention - is the dispensation of use as a requirement for registration.

At present, trademark applications must be based on at least one filing ground. The most common filing bases are:

use in Canada; proposed use in Canada; and use and registration abroad. While an application can be filed in Canada on the basis of an intention to use in the country, it will not issue to registration until a declaration of use is filed attesting to commercial use of the mark in Canada. The registration will issue only for those goods or services for which the mark has been put into commercial use within Canada.

The requirement of having to file a declaration of use to secure registration is often particularly onerous for pharmaceutical trademarks. Pharmaceutical products cannot be sold in Canada until the drug has been approved by Health Canada, and ordinarily neither sample shipments nor use of the mark in the context of clinical trials constitutes trademark use sufficient to support the filing of a declaration of use. Given the lengthy drug approval process in the country, there is often a long delay between the allowance of a pharmaceutical trademark application and the filing of a declaration of use, necessitating the filing of multiple extensions. Indeed, applications must often be re-filed altogether once the maximum allowable extension period has expired.

Once the amendments to the act are implemented, trademark application filing grounds will be eliminated and applicants need only be "using or propose to use, and be entitled to use" the...