Marking your Territory: Key Amendments to the Trademarks Act and the Effect on the Entertainment Industry

On June 17, 2019, long-awaited amendments to the Canadian Trademarks Act came into effect. Since that time, several non-traditional trademarks were filed, including eight applications for a sound, 15 applications for a taste, and four applications for a scent.

This article outlines three key changes to the Trademarks Act and how these changes affect members of the entertainment industry.

1. Goodbye Use, See You in Three Years

Use of a mark is no longer a requirement for registration. Prior to June 17, 2019, to proceed to registration, an applicant needed use of the mark in Canada or a previously registered foreign trademark. With this legislative amendment, applications can now proceed to registration, regardless of whether the applicant has use of the trademark in Canada or a foreign registration.

Because of this change, applications can proceed to registration faster: applications will not be held in abeyance pending confirmation that the applicant has use of the trademark in connection with each of the goods and services listed in the application. Correspondingly, more marks will likely proceed to registration.

To respond to the increase of registered marks, we anticipate an increase in Section 45 non-use expungement proceedings in the next few years. These are summary proceedings in which a person asks the Trademark Office to remove older marks from the register that have not been used in the last three years. This proceeding aims to clear the “deadwood” from the trademark register.

Anyone can ask the Trademark Office to forward a Section 45 notice (i.e. the requirement that the registered trademark owner furnish evidence of use of the trademark) to a person who owns a trademark that has been registered for at least three years after paying the $400 government fee. Upon receipt of this notice, the trademark owner must furnish evidence that it has used the trademark in the preceding three years, failing which, the Trademark Office will expunge the trademark.

2. Classify Goods and Services: It’s Nice

The amendments to the Trademarks Act also made it mandatory for applicants to categorize the goods and services listed in the application in accordance with the Nice Agreement. The Nice Agreement governs an international system that categorizes goods and services into 45 different categories. With this change, applicants must also pay a government fee for each additional class of goods and services listed in their trademark application. Prior to June 17, 2019, there was a single fee for a trademark application, regardless of the number of classes of goods and services included in the application.

While this classification system increases the cost of a trademark application, it reduces the risk of a proliferation of marks on the register. The increased cost (hopefully) deters trademark trolls from filing trademarks in connection with a litany of goods and services. 

3. Unique Marks Can Proceed to Registration

Trademarks are no longer limited to typical word or design marks. Applicants can also apply to register “signs” that include three-dimensional shapes, holograms, moving images, modes of packaging goods, scents, tastes and textures. If an applicant is going to register a “sign”, it must also furnish satisfactory evidence that this sign was distinctive on the date it filed the application.

Conclusion: Use It, Don’t Lose It, or Miss Out On It

With these amendments to the Trademarks Act, producers and other participants in the entertainment industry must be vigilant when selecting marks for their projects. Given the potential of a proliferation of trademarks on the register, applicants must be mindful as to whether trademarks on the register filed in connection with other goods, such as clothing and electronics, limit their ability to generate merchandise revenue.

To get ahead of this issue, producers may consider filing comprehensive trademark applications in several classes of goods and services before their projects air or grow in popularity. While a multi-class trademark application may increase the upfront cost of the trademark application, this cost pales in comparison to the cost associated with fighting with unscrupulous applicants who try to capitalize on a project’s goodwill.

Members of the entertainment industry should also take stock of their intellectual property portfolios to consider whether they want protection of any unique marks such as sounds, three-dimensional shapes, or moving images, which are now protectable.

Regardless of the nature of the trademark, trademark owners must remember to use the mark in the three years following registration, failing which, they risk losing the trademark in connection with the unused goods or services, lest they become the “deadwood” that the Trademark Office clears.

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Meredith Bacal

About Meredith Bacal

Meredith Bacal is a senior associate in the Firm’s Intellectual Property, and Litigation and Dispute Resolution groups. In her litigation practice, Meredith represents a diverse client base on matters related to media, entertainment, technology and defamation. She has appeared before many levels of court, including the Superior Court, Federal Court and Divisional Court, as well as numerous arbitral tribunals.

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