June 17, 2015 By: Wing T. Yan and Taiji Yoshino
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June last year saw some significant changes to the Trade-marks Act with the passing of Bill C-31, the Budget Implementation Act. The amendments to the Trade-marks Act aim to bring Canada in line with international IP practices, by ratifying three major international treaties: the Madrid Protocol, Singapore Treaty and Nice Agreement. This will help Canadian businesses expand internationally, and also reduce costs and unnecessary administration related to securing trademarks. It is also hoped that the changes will entice foreign investment. These are the first major updates to the Act in over sixty years. It is anticipated that new Act will come into force as early as sometime in 2016.

The Bill introduces a number of changes to the Trade-marks Act (soon to be cited as the “Trademarks Act”) so it conforms to the international treaties. Firstly, it expands the definition of “trademark”, describing it now as “a sign or combination of signs that is used or proposed to be used by a person for the purpose of distinguishing or so as to distinguish their goods or services from those of others”. So what is a “sign”? A “sign” is defined as encompassing not only traditional trademarks, such as words or a design and its combination, but also non-traditional trademarks, such as a scent, taste, texture, three-dimensional shape, moving image, hologram, and a mode of packaging goods. Even the position of a certain “sign” on a product will soon become registerable as a trademark. The amended Act will, of course, make a point that the “utilitarian” aspect of a sign cannot be registered.

Here are some examples of one of the non-traditional trademarks, Moving Image Trademarks, that have been registered in other countries, and now will become registerable in Canada. Note, however, that such non-traditional trademarks may need to acquire a certain market recognition (or acquired distinctiveness) before becoming eligible for registration.

Moving Image Trademarks:

(Norway 200610019 by Microsoft Corp)
(Norway 200610019 by Microsoft Corp)

(Norway 201404848 by Kreftforeningen)
(Norway 201404848 by Kreftforeningen)

(Norway, 201405964 by Get AS)
(Norway, 201405964 by Get AS)

This content is not intended to provide legal advice or opinion as neither can be given without reference to specific events and situations. © 2017 Nelligan O’Brien Payne LLP.