c. Trademarks The Trade-marks Act outlines the procedure and process for registering trademarks, as well as the enforcement of registered trademarks.133 However, it is important to note that trademarks do not have to be registered for the rights to arise; it is the use of the trademark in Canada that creates the rights in the trademark.134 The Trade-mark Regulations define an “applicant” for the registration of a trademark as “a person who files an application for the registration of a trade-mark…”135 Although there is no specific requirement of nationality or immigrant status, when applying to register a trademark the application must contain “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.”136 This latter requirement however, is removed once the recently passed Economic Action Plan 2014 Act comes into effect. This legislative amendment appears to no longer require that the content of the application to register a trademark include an address (unless this requirement is implemented through future regulations).137 Furthermore, when an applicant has previously registered a trademark in any country of the Union for the Protection of Industrial Property under the Paris Convention or any World Trade Organization member (“country of the Union”), and a subsequent application for registration is made in Canada by the same applicant, the date of filing of the application in the other country is deemed to be the date of filing the application in Canada.138 The applicant is then entitled to The Trade-marks Act, RSC 1985, c T-13, available at: http://canlii.ca/t/52dg3 [Trade-marks Act] will be amended and its name changed to Trademarks Act by Bill C-31, Economic Action Plan 2014 Act, No. 1, 2nd Sess., 41st Parl, 2014 (assented to 19 June 2014), available at: http://tinyurl.com/na72du9 [Economic Action Plan 2014 Act]. Bill C31 will amend the Trade-mark Act to allow Canada to accede to the Madrid Protocol, Singapore Treaty and Nice Agreement treaties relating to trademarks. At the time of writing the amendments have yet to come into force. 134 Ciba-Geigy Canada Ltd. v. Apotex Inc., [1992] 3 SCR 120, available at: http://canlii.ca/t/1fg4b. The common law tort of “passing off” can be used to enforce the use of unregistered trade-marks. 135 Trade-marks Regulations, SOR/96-195, at s. 2, available at: http://canlii.ca/t/527r2 [Trade-marks Regulations]. 136 Trade-marks Act, supra note 133 at s. 30(g). 137 Economic Action Plan 2014 Act, No. 1, supra note 133 at cl. 339. Section 30(1) now states: 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. (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. 138 Trade-marks Act, supra note 133 at s. 34(1)(a). Wording of s. 34(1)(a) changes once the Economic Action Plan 2014 Act comes into effect, but does not substantially change the meaning of the provision for the purposes of this report. 133 29 29