World Trademark Review Yearbook 2016/2017: A Global Guide For Practitioners, Canada

Legal framework

National law

In March 2014 the federal government introduced major amendments to the Trademarks Act - designed to facilitate implementation of the Nice Agreement, the Singapore Treaty and the Madrid Protocol - in Bill C-31. However, Bill C-31 also contains fundamental changes to the current trademark legislation, including the elimination of use as a registration requirement. Bill C-31 received royal assent in June 2014 and the amendments are expected to come into force in 2017.

Bill C-8, the Combating Counterfeit Products Act, was introduced in 2013 to improve legal remedies for counterfeiting and address a longstanding trade issue. It was granted royal assent in December 2014 and new border detention provisions (the request for assistance), additional criminal penalties for counterfeiting and a broadened definition of 'trademark infringement' all came into force on January 1 2015. Additional changes are pending in Bill C-59. If passed, these will ensure that trademark agents have privilege for communications relating to trademark protection and give administrative authorities clear power to allow time extensions for various force majeure closures. International treaties

Canada is a signatory to the Paris Convention for the Protection of Intellectual Property, which provides for the right of priority on the basis of an application filed in a contracting state and lays down rules that all contracting states must follow.

Legislation to implement Canada's obligations under the World Trade Organisation Agreement on Trade-Related Aspects of Intellectual Property Rights came into force on January 1 1996. Among other things, this introduced a comprehensive set of procedures for the protection of geographical indications for wines and spirits.

Unregistered trademarks

Canada offers protection to both registered and unregistered trademarks and trade names, including logos, shapes and some non-traditional trademarks. The owner of an unregistered trademark or trade name may not only assert its rights over others (by way of a passing-off action), but also rely on those rights to prevent registrations of confusingly similar trademarks.

Registered trademarks

Formal requirements

Any person - including trade unions, businesses and government administrative authorities, and their agents - may apply for trademark registration. Section 30 of the Trademarks Act establishes that goods and services must be described in "ordinary commercial...