1954 will be remembered for many things. Play-Doh, Elvis' first record, Detroit winning the Stanley Cup. However, on July 1, another event occurred with much less fanfare. While Canadian families watched parades and ate picnic lunches to celebrate Canada's 87th birthday, the Trade-marks Act (TMA) quietly came into force.
This year marks the 50th anniversary of the Trade-marks Act. It was the result of many years of study, analysis and compromise and it has stood the test of time. This article will look at its conception, birth, adolescence, and now its middle-age years.
The predecessor to the TMA was the Unfair Competition Act (UCA) which came into force in 1932. Trademark professionals were not altogether happy with the UCA, as it did not reflect post-war business practices.
For example, the UCA imposed the obligation that a trademark must be used exclusively by the owner on his own wares, thereby prohibiting trademark licensing. A trademark not only had to be distinctive, but it had to be inherently able to "adapt to distinguish." It was not enough for a trademark to be distinctive in fact.
The UCA divided all trademarks into two classes, words and designs.
Problems arose when traders used marks consisting of both word and design features. They had to dissect their trademark applications into two parts, one for the word and the other for the design. Trademark protection was limited to wares.
A trademark could be no longer than 30 characters, precluding most slogans from being registrable. Pressure was placed upon the government to make changes to the current law.
In 1947, the Trade Mark Law Revision Committee (TMC) was created to study the UCA. Its aim was to determine problematic areas in the UCA and make suggestions for improvement.
The TMC published its report outlining proposed changes, including a draft statute, on January 20, 1953. Included in the report were proposals to condense word and design marks into one registry, create registered user provisions to allow for trademark licensing, as well as provide protection against the depreciation of the goodwill of a trademark, which at the time, was a very innovative proposal.
The TMC prepared a draft statute which it submitted to various stakeholders who had indicated an interest in the subject.
Amendments were made to the draft statute and it was submitted to Parliament for study in the Senate in June 1952. Subsequently, the TMC submitted a final draft statute with its Report.
Then Bill R-3 (An Act relating to Trade Marks and Unfair Competition) was introduced to Parliament and the Senate Standing Committee on Banking and Commerce held hearings to discuss the bill in March 1953.
Minor amendments were made before the bill was given Royal Assent in May 1953. It was not until July 1, 1954, almost seven years after the creation of the TMC, when the new Trade-marks Act finally came into force.
The first trademark registered under the new Act was the Blue Cross design. It was filed on July 23, 1954, and registered on November 5 of that same year. The mark was registered in association with hospitalization services as well as contract services for prepaid health care.
That first year, 1,142 trademark applications were filed with the Trade-marks Office, along with one mark under the prohibited marks section. By 1959, the number of trademark applications more than doubled to 2,490. Within 10 years, the number had increased to 2,893.
In 1964, there was a spike in applications when 4,207 were filed. The number of applications increased every year until 1969 when 7,546 were filed. The new Trade-marks Act seemed to be working well.
There have been relatively few major amendments to the TMA. The first amendment of any significance occurred in 1969 when section 49A was added, which dealt with use of trademark by related companies in the pharmaceutical field. In 1970, all references to "Exchequer Court" were replaced with "Federal Court."
There were no major changes to the TMA until the 1990s. In 1993, Parliament passed the Intellectual Property Improvement Act, which introduced some cosmetic and non-controversial amendments. One of the non-controversial amendments was the replacement of the concept of registered user with that of licensee.
In 1996, the World Trade Organization Agreement Implementation Act came into force, thus fulfilling Canada's obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). Of note was the introduction of protection for geographical indications for wines and spirits.
In the first six months of 2004, over 13,500 marks have been registered with the Trade-marks Office ("marks" include trade-marks, certification marks, distinguishing guises, section 9 marks, geographical indications and denominations of plant varieties). This brings a total of over 513,000 marks registered since the TMA came into force in 1954.
The average number of applications in the past six fiscal years is 38,649 -18 times the average number in the first six years of the Act. Something must be right.
What does the future have in store for the TMA? It looks pretty good for 50, a few nips and tucks here and there, but otherwise just as beautiful as in 1954.
Recently, amendments were made to alter the lists of generic wines and spirits.
There may be some more surgery, cosmetic or functional, on the way. Perhaps to change the spelling of "Moslem" to "Muslim" in the prohibited marks section (protection of the "Red Crescent") or to remove that infernal hyphen in "trade-mark" (but perhaps that is what makes the statute so "Canadian"). There may be reason to reduce the term of protection from 15 years to 10, to become in-line with Canada's major trading partners. Although the TMA has catered to its users reasonably well for fifty years, it is not exempt from periodic examinations to ensure it continues to work well.
The economic landscape has changed dramatically since 1954, yet the Trade-marks Act continues to live on. Both the Copyright Act and the Patent Act have undergone recent major revisions to take into account today's society, but not the Trade-marks Act.
Why? Perhaps because the art of branding products has changed little since the 1950's. Or perhaps the answer lies in its inherent flexibility to transform itself to meet societal change.
DISCLAIMER: The opinions and ideas expressed in this article are solely those of the author and do not in any way express those of Industry Canada or of the Government of Canada.THE LAWYERS WEEKLY:
