Thank you, Michel.
Thanks for the opportunity to speak today.
My background is as a lawyer, called in the province of Ontario in 1985. I am certified by the Law Society of Upper Canada as a specialist in intellectual property. I am a registered patent and trademark agent and have been filing and prosecuting trademark applications in the Canadian trademarks office since 1985.
We've reviewed this bill, and find it contains many positive aspects. A number of them are really quite detailed, and today's time doesn't permit me to review any in detail, but things like correction of obvious errors on the register, simplification of procedures for recording transfers of title, and so on, are all very good things.
I'm here primarily to discuss one large concern, which is abolishing the requirement that a trademark be used before a Canadian trademark registration can be granted. The concern is cluttering the register with deadwood. Primarily, the Intellectual Property Institute believes that more consultation is required and that the amendment should not proceed in a bill such as this without further consultation. However, if the amendments are going to proceed, IPIC recommends that further amendments be introduced to put safeguards in place to avoid cluttering the register with trademarks that are not in use in Canada.
Today a proposed applicant who ends up not using their trademark, and who therefore can't file a declaration of use, abandons their application. Under the proposed amendments, that trademark will be registered.
Why do we care about cluttering the trademark register?
Well, here's what a typical day looks like in my office. A client comes into my office. Their business has a new product they would like to introduce. They've selected one or a few possible trademarks for this product. The trademark they choose will be used in their promotion and in their advertising. It will be used on their packaging. They may acquire a domain name. Ultimately they're going to apply to register this trademark.
Before they do any of these things, this trademark has to be cleared. The first place we go to clear a trademark is to the Canadian trademarks register. We have professional trademark searchers who review similar trademarks in related product areas for anything that might pose a conflict. I get the results of this search, and I determine whether in fact there is a trademark in there that may be confusing. If I render a favourable opinion, the business goes ahead with the trademark. If I say, “Sorry, there's something in there that conflicts”, they go back to the drawing board and have to start again. Sometimes it takes quite a number of these searches before a business can arrive at a trademark that both satisfies their business needs and does not conflict with an existing trademark.
This gives rise to a lot of costs. There's the attendant cost of clearing the trademark, which increases with the number of trademarks on the register. That's fine if we're busy and our economy is flourishing, and all these trademarks are in use. But the proposed amendments, unfortunately, will result in a number of trademarks on the register that are not in use in Canada. In IPIC's view, this puts an unnecessary burden on Canadian businesses seeking to launch new products.
We have proposed three recommendations to reduce or alleviate this problem.
The first, which is in our submission, is to provide a definition of “propose to use”. What does an applicant mean when they say they intend to use this trademark? Does this mean “we might use it someday in Canada”, or does this mean “we have a bona fide intention to use this trademark in Canada in the imminent future”?
The second and related recommendation is just that. The applicant should be declaring their bona fide intention to use this trademark and commit to and put some teeth in what they're actually stating when they say they have that intention to use.
Finally, as a safeguard, post-registration, registrants should be required to periodically file evidence that the trademark is in fact in use in the Canadian marketplace. In the United States, they do this with what's called a section 8 declaration between the fifth and sixth anniversaries and then again at every renewal, at 10-year increments.
Those are our proposals for further implementation of legislation if these provisions are passed.