Changes to the Canadian Trademarks Act & Regs effective April 1, 2025, will affect trademark owners and any parties in Opposition proceedings, and/or with disputes before Federal Court.
Essentially these changes allow the Registrar of Trademarks additional powers in relation to Official Marks, and disputes that relate to trademarks with geographical notations.
This article only relates to the changes in regard to Official Marks. Official Marks are a distinctive feature of Canadian Trademark Law that provide Government entities with an exclusive and robust tool to protect their marks, symbols, crests, badges, and emblems.
Historically, Official Marks are incredibly well protected on the Canadian Trademark’s Register, making it almost impossible for trademark owners to object to them or have them removed. There were many flaws to the system of obtaining an Official Mark, not to mention the blanket, overriding protection granted to them. The lack of rigorous examination of these marks over the years has led to the registration of Official Marks that may not meet the necessary criteria.
Further, there is no need for Official Marks to be distinctive; they can be generic, so consequently there is potential for abuse. Public authorities may adopt marks that are generic, descriptive, or confusing with existing trademarks, creating difficult brand protection challenges for businesses. Official Marks are also entitled to indefinite protection, with no need to regularly renew them (whereas businesses must renew their trademarks every 10 years and pay the prescribed fees). This gives an unfair commercial advantage.
Effective April 1st, 2025, the Registrar of Trademarks will now be able to remove Official Marks from the Canadian Trademarks Register where the owner of the Official Mark is either not a public authority or no longer exists. Official Marks may also be voluntarily reviewed by the Registrar even where no action has been commenced. These changes create a much fairer system for everyone.
For more information on trademark registration and to discuss your specific circumstances, please contact Vanessa DeDominicis on 250.869.1140 or [email protected]. Vanessa practices in the areas of Real Estate, Wills/Estates and Intellectual Property at Pushor Mitchell LLP in Kelowna and would be more than happy to assist you.
