Defensive domain names – are you protected?
Hurry Up and Wait: Timeline for Canadian trademark law changes to take effect pushed back until 2017
Defensive domain names – are you protected?
We wrote to you some time ago about registering your principal trademarks as “defensive” domain names in the top level domain .xxx which largely features websites with “adult” content. Many of you did so.
However, you should be aware that over 400 new gTLDs (the letters after the dot e.g. .net, .com, etc.) have gone live in the last 12 months with hundreds more to come. Among them recently are new “adult” TLDs including .adult and .porn.
Recently, a number of celebrities and major companies have registered in these TLDs (including Taylor Swift) to protect against third parties using their trademark as part of an “adult” website as some are very sexually graphic and feature subject matter that some would find distasteful.
Please let us know if we can assist you in deciding whether to do so and if so, which marks to protect. The cost is quite small for doing this and we recommend you consider it seriously.
In addition, necessity being the mother of invention, there are new ‘watch services’ priced reasonably with whom you can register your mark(s) and be notified if anyone adopts a ‘similar’ domain name in ANY new TLD. Please let us know if you need information or assistance about this service which we can arrange for you if interested.
Hurry Up and Wait: Timeline for Canadian trademark law changes to take effect pushed back until 2017
There was much ado back in the spring of 2014 when Bill C-31 – a bill which contained unanticipated and fundamental amendments to Canadian trademark law – was introduced and subsequently fast-tracked through parliament without consultation or debate. After the Bill received Royal Assent in June 2014, it was expected to come into force by mid-2015. This process which initially moved at a break-neck pace has subsequently sputtered to a crawl and the timeline for the changes to come into force has been pushed back until at least the beginning of 2017.
To quickly recap, the majority of the amendments contained in Bill C-31 were designed to bring Canada in line with the requirements to accede to the Singapore Treaty, the Madrid Protocol, and the Nice Agreement.
As explained by the Canadian Intellectual Property Office (CIPO) in a notice on its website regarding the Forward Regulatory Plan 2015-2017, “[these] treaties will harmonize Canada’s trademark protection regime with international norms and will reduce cost, complexity and red tape for Canadian applicants seeking trademark protection in more than one country.”
One of the more controversial changes in the Bill was the removal from the Trade-marks Act of all use requirements at the time of registration. The Bill received Royal Assent in June 2014 but further work was needed to amend the Trade-marks Regulations and update CIPO’s associated IT system before the changes could take effect. The initial projection was that the amendments contained in Bill C-31 would come into force by the middle of 2015.
Although widely critical not only of the changes but of the way in which they were brought about, IP practitioners begrudgingly bowed to the inevitable when the Bill received Royal Assent. In anticipation of the amendments coming into force, many trademark agents reached out to their clients to inform them of the changes and how they may impact future and pending trademark applications. Trademark owners adjusted their strategies accordingly.
The amendments will have a tangible effect on many pending applications: for example, for a trademark application based on proposed use, the applicant will no longer be required to submit a declaration of use in respect of the trademark in order for it to succeed to registration. As a result, many applicants of pending proposed use applications are choosing to request multiple extensions of time to file their declarations of use in the hopes that the requirement to do so will disappear before the time runs out. For these applicants, the date on which the amendments will come into force is a highly important and relevant date.
Furthermore, many trademark owners are anxiously awaiting the implementation of the Madrid Protocol in Canada, which will allow Canadian applicants to file a single international application for their trademark in over 90 of the contracting states.
It now appears as though trademark owners and practitioners will be waiting a little longer for these changes to take place.
The initial public consultation period for the proposed changes to the Trade-marks Regulations ran through October and November 2014 during which time the government received several comments from trademark practitioners and owners. On March 30, 2015, CIPO updated its notice regarding the Forward Regulatory Plan 2015-2017 to say that “[i]nterested stakeholders will also have the opportunity to comment when the proposed amendments/regulations are pre-published in Canada Gazette, Part 1 (expected late 2016)” (emphasis added). As the comment period following publication in the Canada Gazette is mandated by law to be more than two months (75 days for proposals for new and changed regulations that may affect international trade), it is safe to assume that the amendments to the Regulations will not take effect until early 2017 and therefore that the changes to the Trade-marks Act will not come into force until at least that time.
It would seem that the waiting game continues. As the estimated date for the coming into force of these important and sweeping amendments is now almost two years away, trademark strategies – both domestic and international – may need to be revised in light of this new forecast.
Questions? If you have any questions please call 613-232-5300 to speak to a professional or email us at OwnWhatsYours@aventum.law.