Mr. Chair, honourable members, we thank you for the invitation to speak with you today.
The Canadian Bar Association is a national association of 37,500 lawyers, notaries, law teachers, and students. Many of our members are in-house counsel who represent significant stakeholders in the intellectual property system. The CBA national intellectual property law section deals with law and practice relating to all aspects of ownership, licensing, and transfer and protection of intellectual property.
Canadian trademark law is respected internationally as effective in protecting the rights of trademark owners. A fundamental requirement of the trademark system is that the trademark be used before its owner will be granted exclusive rights. This has been a cornerstone of Canadian trademarks law since the statute first was enacted in 1868.
The sections of the bill implementing this change—that is, the elimination of a requirement to declare use—include clause 330, which impacts section 16 of the Trade-marks Act regarding entitlement to registration; clause 339, amending section 30 concerning the contents of applications; and clause 345, removing from section 40 the requirement to file a declaration of use. But this is not just about removing a form. Really, these sections deal holistically with the requirement to use, as has been covered by Mr. Eisen.
One of the points we want to make is that elimination of the use requirement is certainly not a prerequisite of the three treaties that are contemplated to be implemented by Bill C-31—the Madrid protocol, the Nice classification, and the Singapore treaty. In fact the Singapore treaty contemplates the maintenance or introduction of a use requirement in jurisdictions that have adopted that treaty.
The proposed amendments will have a negative impact on Canadian businesses in several respects. We have outlined seven in our submission. First, as mentioned by Mr. Eisen, the trademarks register will be cluttered with registrations that no longer reflect market realities—that is, a ground of use and a date, as currently required if a mark has been used. The lack of useful information will make it more difficult to pre-clear marks, as Mr. Eisen has covered. That makes it more difficult to give meaningful advice on, for example, the chance of success by a business in Canada in an infringement or passing-off type of scenario.
Without the requirement to declare use to keep applicants accountable, more trademark opposition proceedings—these are administrative proceedings that can occur in the course of a trademark application—will be required to protect the interests of trademark owners.
There is real potential for trademark squatters or trolls. Industry Canada recently had a consultation about implementing measures to address patent trolls. This legislation, unfortunately, is introducing the possibility of trademark trolls or squatters. Think about domain names and the initiation of the domain name system and all the difficulty that occurred with cybersquatting. It's a very similar scenario here.
While deadwood registrations can be cancelled or removed summarily, under section 45 of the Trade-marks Act, for non-use, this cannot occur until three years after registration. Nothing prevents the owner of the deadwood registration from re-registering the mark, a direct consequence of the check of having to declare use being eliminated.
We believe these amendments create trademark rights “in gross”—that is, a bare or naked right in a trademark no longer cloaked in use. That jeopardizes the effectiveness of the trademark system.
At the same time that Canadian businesses face these increased costs and uncertainties, they also may face increased filing fees, because of the Nice classification system that requires all goods and services to be classified, and more frequent renewals. The initial period of registration in any renewal period is being reduced by one-third, from 15 years to 10 years, as a result of the adoption of the Madrid protocol.
In addition, Canadian businesses may face increased costs from having to re-register or apply to the Federal Court when they cannot correct errors in the certificate of registration that issues within six months. They have to make that correction within six months under this bill. They should have ample opportunity to correct errors made by the Canadian Intellectual Property Office.
Thank you.
