Canada’s trademark law is changing, and these changes will be coming into force on June 17, 2019. The sweeping changes which the new law will usher in are the most significant since the 1950’s. We therefore thought it was appropriate to take a deep dive into the new legislation, to briefly outline the main areas of change, and how trademark owners will be impacted.
It will now be possible for applications to be refused on the basis that the mark is not distinctive. This will require that evidence be filed to establish that the mark has acquired distinctiveness, as of the filing date of the application, rather than as of the date on which the evidence is being filed. Based on the evidence which is filed, the Examiner can then restrict to the registration to the goods or services and to the territorial area in Canada in which the trademark is shown to be distinctive.
In particular, under Section 32(b) of the Act, evidence that a trade mark is distinctive as of the filing date of the application for registration will be required whenever the Registrar is of the “preliminary view” that a trademark is not inherently distinctive. This gives Examiners a wide discretion to require that evidence of distinctiveness is required to be filed, which may be very difficult and expensive to compile.
Under Section 32(c), evidence of distinctiveness will also be required where the trademark consists of a colour or a combination of colours without delineated contours. Under Section 32(d), such evidence will also be required where the trademark consists exclusively or primarily of one of more of the following signs: the 3-dimensional shape of goods or an integral part or the packaging of any of the goods; a mode of packaging goods; a sound; a scent; a taste; a texture; or any other prescribed sign.
Evidence of distinctiveness will also be required in cases where a trademark is not registrable by virtue of Section 12(1)(a) or 12(1)(b) of the Act, namely that the mark is primarily merely a name or surname, or is clearly descriptive or deceptively misdescriptive of, inter alia, the character or quality of the goods or services, or of their geographic origin. Under the current legislative scheme, Section 14 of the Act allows a non-Canadian applicant who owns a trademark registration outside Canada to overcome a descriptiveness or surname objection by filing evidence that the trademark is “not without distinctive character” in Canada. Section 14 will be abolished under the new Act. Now, both Canadian applicants and non-Canadian applicants will need to file evidence under Section 12(3) of the new Act that a mark has become “distinctive”, and not merely that the trademark is not without distinctive character. This would appear to be a higher burden, and an applicant will also need to prove sales and advertising information on a provincial or regional basis in Canada, with any resulting registration potentially being restricted to those particular provinces in which distinctiveness has been shown.
At this time, the scope of examination for distinctiveness under all of these scenarios remains unknown, adding a significant degree of uncertainty to the examination process.