Combating Counterfeit Products Act Receives Royal Assent

On December 9,2014 Royal Assent was given to Bill C-8, the Combating Counterfeit Products Act. The intention of Bill C-8 is to give the government and holders of trade-marks and copyrights new mechanisms for enforcement, along with substantial remedies, in order to combat counterfeit and black-market goods. Before the introduction of Bill C-8, Canada had been criticized for not having meaningful policies to combat the global problem of counterfeit trafficking which flowed across Canadian borders.

Specific enforcement mechanisms contained in Bill C-8 include:

  • new civil prohibitions under the Trade-marks Act and Copyright Act giving rights holders the ability to start civil actions against those who infringe their trade-mark or copyright by possessing, manufacturing, distributing or trafficking goods for commercial purposes;
  • new criminal offences under the Trade-marks Act and Copyright Act for possessing, manufacturing, distributing or trafficking counterfeit goods for commercial purposes;
  • new provisions giving customs officials ex officio power to independently seize and detain suspected counterfeit goods. This includes the ability for copyright and trade-mark owners to file a “request for assistance” with customs officials to increase the information available to customs regarding possible counterfeit goods.

For a deeper review of the changes contained in Bill C-8, please see our previous post written in March 2013 when the bill was first introduced as Bill C-56.

While the Bill has obtained Royal Assent, it is only partially in force. Changes currently in force include:

  • the introduction of the new criminal provisions;
  • the deletion of section 7(e) of the Trade-marks Act; and
  • amendments to Section 20 of the Trade-marks Act dealing with infringement.

The majority of the amendments to the Trade-marks Act and Copyright Act, including the provisions relating to importation and exportation and ex officio powers of custom officials, will be brought into force by regulation. It is not clear when this will occur. However, it is thought that implementation will be in step with Bill C-31, the Budget Implementation Act, which is also waiting to come into force sometime in 2015 early 2016 and contains further significant amendments to the Trade-marks Act.

We will keep you updated as coming into force dates are announced and these legal tools become available to trade-mark and copyright owners.

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Canadian Intellectual Property Office posts proposed amendments to Trade-marks Regulations

The Canadian Intellectual Property Office has today posted proposed amendments to the Trade-marks Regulations at http://bit.ly/1xCOIEj  The consultation period for these proposed amendments is from October 1 to November 30, 2014.   As quoted in CIPO’s press release:

“The proposed regulatory amendments to the Trade-marks Regulations are required to enable Canada to accede to the Singapore Treaty on the Law of Trademarks, the Protocol relating to the Madrid Agreement concerning the International Registration of Marks and the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.

The new regulations reflect the requirements of the trade-mark treaties and aim to increase legal certainty, streamline and clarify CIPO’s procedures, and align Canada’s trade-mark protection regime with international norms. The proposed amendments also include measures relating to the opposition regime and summary cancellation proceedings.”

 

CIPO’s acceptable wares and services entries: added to TMClass, made Trilateral friendly

CIPO has announced two interesting changes regarding its Wares and Services Manual.

TMClass

First, CIPO-approved entries have now been added to TMClass, a multi-jurisdictional database of acceptable goods and services claims maintained by  Europe’s Office for Harmonization in the Internal Market (OHIM).  TMClass now contains acceptable goods and services descriptions for nearly 40 different jurisdictions in 29 different languages, making it an increasingly useful resource for practitioners who are crafting IDs with an eye to minimizing or altogether avoiding local ID objections.

CIPO’s entries were added to the TMClass database on August 25, 2014, and are denoted in the database by a “CIPO – OPIC” tag.

Trilateral Partnership

Additionally, CIPO has now updated its own database to denote IDs  that are acceptable to local authorities in the US, Japan, Korea and under the OHIM regime.

By way of background, in 2009 CIPO signed a memorandum of co-operation with the “Trilateral Partners” – a loosely organized group of jurisdictions  who have worked to promote and effect harmonization in their IP registration systems over the last few decades.

The Memorandum saw CIPO join the Partners’ trademark identification project. The goal of the project was to create and maintain a list of IDs for goods and services that, if entered in an application for the registration of a trademark in any Partner country, would be accepted.

Changes to the Canadian Wares and Services Manual were made briefly in 2011 to denote terms acceptable to the Trilateral Partners; however, those changes were reversed almost immediately when CIPO concluded many terms it had added did not comply with Canadian trademark requirements.

Apparently those issues have now been resolved.  Canadian Wares and Services Manual entries that are ‘Trilateral-compliant” are now denoted in the database with the use of a capital “T”.

Nice Classifications

Additionally, it appears CIPO has begun the process of assigning Nice classes to the terms contained in its database, in anticipation of Canada’s adoption of the Nice Classification system. That change is just one of many forthcoming changes to Canadian trademark practice arising from a significant overhaul of Canadian trademark law.

While the law has been passed by the federal government, it has not yet come into force – and just when the new provisions will take effect is unclear.

Notably, CIPO has not yet publicly distributed any drafts of the supporting regulations the new law requires.  However, CIPO has suggested that it will consult with trademark professionals later this fall on those regulations.

About the Blog

The authors of the Canadian Trademark Blog are all members of the Canadian law firm Clark Wilson LLP, based in Vancouver, Canada. Each author's practice focuses–either in whole or in substantial part–on Canadian intellectual property law. Together, they manage the trade-mark portfolios of local, national and international brand owners in nearly all industries and markets.

The Authors