Category: IP Practice and Law

Two omnibus budget implementation bills (Bill C-31 in 2014 and Bill C-86 in 2018) will result in substantial changes to Canada’s trademarks regime.

Can a trademark infringer argue that its own infringing use has rendered the trademark unenforceable?

In Canada, absolutely yes, though the prospects of success in that argument will depend on the facts.  A trademark can become unenforceable if it ceases to be distinctive of the owner (s. 18(1)(b), Trade-marks Act).

Beyond being useful to remove infringing images, videos and articles from web pages, Digital Millenium Copyright Act (“DMCA”) notices can be used to interdict online platforms and fulfilment services that support the distribution and sale of infringing software.

Canada’s legislation implementing the Madrid Protocol, the Nice Agreement and the Singapore Treaty takes effect on June 17, 2019. While Canada will begin using the Nice classification, it will maintain the requirement to specify goods and services. Canada is also eliminating the requirement to declare whether and when the trademark was used in Canada.

In the evening of October 29, the Canadian government tabled Bill C-86.  Mimicking the previous conservative government's approach, the so-called Budget Implementation Act, 2018, No. 2 is an omnibus bill containing very significant changes to IP legislation.