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Imagine you are a technology company that has been in business for 5 years. You registered a trademark in 2018 and have just read Registration of a Trademark, where we talk about how section 30 is necessary to have your logo or trademark registered. You notice that the section 30 when you registered your first trademark looked quite different than the one cited in that article. You remember that there was some specific requirement in section 30 because your trademark was not being used in Canada. What happened? Did the section change?
Legislative History of the change to Section 30
If you registered your trademark prior to June 19, 2019, you would have seen a different section 30. The Economic Action Plan 2014 Act, No. 1 (S.C. 2014, c.20) changed many parts of the the Trademarks Act, including section 30.
The Economic Action Plan 2014 was assented to on June 19, 2014, but the provisions modifying s. 30 of the Trademarks Act came in force on June 17, 2019. Section 368 of the Economic Action Plan Act stated that the provisions related to the Trademarks Act, other than section 367, would come into force on a date prescribed by an Order in Council. On October 29, 2018, Order in Council SI/2018-100 fixed that date to be June 17, 2019.
Section 30 Pre-June 17, 2019
The Pre-June 17, 2019 section 30 of the Trademarks Act stated that
30 An applicant for the registration of a trade-mark shall file with the Registrar an application containing
(a) a statement in ordinary commercial terms of the specific goods or services in association with which the mark has been or is proposed to be used;
(b) in the case of a trade-mark that has been used in Canada, the date from which the applicant or his named predecessors in title, if any, have so used the trade-mark in association with each of the general classes of goods or services described in the application;
(c) in the case of a trade-mark that has not been used in Canada but is made known in Canada, the name of a country of the Union in which it has been used by the applicant or his named predecessors in title, if any, and the date from and the manner in which the applicant or named predecessors in title have made it known in Canada in association with each of the general classes of goods or services described in the application;
(d) in the case of a trade-mark that is the subject in or for another country of the Union of a registration or an application for registration by the applicant or the applicant’s named predecessor in title on which the applicant bases the applicant’s right to registration, particulars of the application or registration and, if the trade-mark has neither been used in Canada nor made known in Canada, the name of a country in which the trade-mark has been used by the applicant or the applicant’s named predecessor in title, if any, in association with each of the general classes of goods or services described in the application;
(e) in the case of a proposed trade-mark, a statement that the applicant, by itself or through a licensee, or by itself and through a licensee, intends to use the trade-mark in Canada;
(f) in the case of a certification mark, particulars of the defined standard that the use of the mark is intended to indicate and a statement that the applicant is not engaged in the manufacture, sale, leasing or hiring of goods or the performance of services such as those in association with which the certification mark is used;
(g) the address of the applicant’s principal office or place of business in Canada, if any, and if the applicant has no office or place of business in Canada, the address of his principal office or place of business abroad and the name and address in Canada of a person or firm to whom any notice in respect of the application or registration may be sent, and on whom service of any proceedings in respect of the application or registration may be given or served with the same effect as if they had been given to or served on the applicant or registrant himself;
(h) unless the application is for the registration only of a word or words not depicted in a special form, a drawing of the trade-mark and such number of accurate representations of the trade-mark as may be prescribed; and
(i) a statement that the applicant is satisfied that he is entitled to use the trade-mark in Canada in association with the goods or services described in the application.
General Requirements
Under these provisions, all trademark application required a statement, in ordinary commercial terms, of the specific wares or services in association with which the mark has been used or is proposed to be used. For a situation where the trademark was being used, the wares or services must be grouped into general categories. The application also required the name and the address of the applicant’s principal office, or place of business in Canada. If the applicant lived abroad, then it also required the address of the applicant’s principal office or place of business abroad, as well as the name and address of a person or firm to whom any notice in respect of the application or registration may be sent (in Canada). Unless the trademark was for a tradename, it also required a drawing of the trademark and such number of accurate representations of the trademark as may be prescribed.
Specific Requirements
Section 30 also had specific requirements based on different categories. For an application based on use in Canada, the applicant must have provided a date from which the applicant, or any predecessors in title, had used the trademark in association with each of the wares or services described in the application.
For an application where the trademark was not used but was made known in Canada, the applicant must have provided the name of the country of the Union in which the trademark had been used by the applicant or any predecessors in title.
In the case of an application where the trademark was subject to registration in another Country in the Union, the applicant must have provided particulars of the foreign application or registration.
In the case of a proposed trademark, the application must have contained a statement that the applicant, by itself or through a license, intended to use the trademark in Canada.
For a certification mark, the applicant must have provided the Registrar with the particulars of the defined standards that the applicant intended to indicate by the mark, as well as a statement that the applicant is not engaged in the manufacture, sale, leasing, or hiring of wares or the performance of services such as those specified to be used in association with the certification mark. The applicant must have also furnished a certified copy of the registration certified by the office in which it was made.
Let's return to your previous trademark registered in 2018. As your trademark was only for proposed use (i.e. not actually in use yet), then that version of section 30 specifically stated that you were required to submit a statement that the applicant, by itself or through a license, intended to use the trademark in Canada.
Section 30 Post-June 17, 2019
The current Section 30 of the Trademark Acts reads different than the previous section 30. It states that
30 (1) A person may file with the Registrar an application for the registration of a trademark in respect of goods or services if they are using or propose to use, and are entitled to use, the trademark in Canada in association with those goods or services.
Contents of application
(2) The application shall contain
(a) a statement in ordinary commercial terms of the goods or services in association
with which the trademark is used or proposed to be used;
(b) in the case of a certification mark, particulars of the defined standard that the use
of the certification mark is intended to indicate and a statement that the applicant is not
engaged in the manufacture, sale, leasing or hiring of goods or the performance of
services such as those in association with which the certification mark is used or proposed to be used;
(c) a representation or description, or both, that permits the trademark to be clearly defined and that complies with any prescribed requirements; and
(d) any prescribed information or statement.
Nice Classification
(3) The goods or services referred to in paragraph (2)(a) are to be grouped according to the classes of the Nice Classification, each group being preceded by the number of the class of the Nice Classification to which that group of goods or services belongs and presented in the order of the classes of the Nice Classification.
Disagreement
(4) Any question arising as to the class within which any goods or services are to be grouped shall be determined by the Registrar, whose determination is not subject to appeal.
Section 30(1) does not provide the same distinction on the face of the section as did the previous section 30. There is no explicit distinction between the application for trademarks that have been used in Canada, is made know, are proposed to be use, or that are subject to another country in the Union. Instead, 30(1) states that a person may file a trademark application for any trademark if they are using it, propose to use it, and are entitled to use it in Canada, and subsection 30(2) provides the requirements of that application.
Paragraph 30(2)(a) restates the old subsection (30)(a), expect that it removes the word “specific” (more on that below). Subsection 30(2)(b) discusses the certification mark which 30(1)(f) used to cover, but it also adds “proposed to be used." Subsection 2(c) covers what type of representation you are required to submit with the application. The new subsection only refers to a prescribed representation, but it does not explicitly require a drawing of the trademark. Subsection 30(2)(d) also requires another prescribed information or statement be submitted.
Unlike the previous section 30, the new version tries to streamline the section. It does not make any specific requirements based on the type of use of trademark (i.e. use vs. proposed use); instead, it points to the "prescribed requirements" and "prescribed information or statement."
“Prescribed” in the legal world almost always means that one needs to check the regulations passed with that piece of legislation (a future blog post will look more closely at the specific requirements of the regulations under the Trademarks Act). Oftentimes, a legislative drafter will use the term "prescribed" to provide the administrative bodies (like the Registrar) with greater flexibility to modify the technical requirements without having to change the actual piece of legislation. At the same time, this approach makes the process more complex for the registrant because now one is required to know how to reference any regulatory information to "fill in the gaps."
Subsection 30(3) explicitly adds the requirement that the classes must be grouped according to the Nice Classification. The specification of Nice Classifications in section 30 simply made explicit what was implicit previously.
Subsection 30(4) states that any questions regarding which goods or services are to be grouped shall be determined by the Registrar, whose determination is not subject to appeal. This inclusion of not allowing an appeal the Registrar’s decisions is done to provide finality to the decision, but one could expect an enterprising lawyer to challenge this provision at some point in the future.
Tow Services International, Inc & Montobacco Ltd
Even though the new section 30 of the Trademarks Act came into force on June 17, 2019, the transitional provisions create a situation where some trademarks are still subject to the old section 30 rather than the new one. Like all legislative clauses, they are subject to the interpretation of the court (a future blog post will tackle the case law behind these transitional sections).
For now, the vast majority of case law occurring after June 17, 2019 exclusively deals with the old section 30. We still do not have a good idea on how or whether the courts will distinguish and differentiate the old section with the new.
In Tow Services International, Inc. v. Trademark Factory 2021 FC 550, 2021 CF 550, the Federal Court essentially read in a specificity clause that was removed in the new subsection 30(1). The court found that this specificity requirement was still retained in section 30 because of section 29 of the new Trademark Regulation, SOR/2018-277: “absent further legislative or regulatory amendment to remove the requirement altogether, the need for specificity in the statement of goods or services remains applicable throughout the life of a trademark registration. [. . . ] In other words, the extension application must comply with old Paragraph 30(a) of the Trademarks Act or the new Section 29 of the Trademarks Regulations.” As discussed above, this case seems to confirm that the new section 30 "leans" more heavily on the regulations than the previous one.
In Montobacco Ltd. v. Marley Green LLC 2021 COMC 87, 2021 TMOB 87, the trade-mark opposition board sidestepped the issue in its entirety, relying on the transitional clauses mentioned above. In this case, the opponent opposed a trademark on grounds that included the old sections 30(a), 30(e), 30(g), and 30(i). The court stated that “all references in this decision are to the Act as amended, with the exception of references to the grounds of opposition.” In other words, the board recognizes the new Act, but due to the transitional clauses, it doesn't have to worry about the new section 30!
Even though we are now 3 years from when the new section 30 came into force, the judicial treatment of this section remains sparse.
Have any questions about trademarks? Andrew Roy Legal helps businesses of all sizes on every stage of the trademark process. Call us today at 587.896.2769 or book a free, no obligation zoom consultation
The information in IP Legal Iteration is not legal advice and does not establish an attorney-client relationship.
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