Significant Amendments to Canada’s Trade-marks Act Closer To Reality

Canada’s federal Government introduced Bill C-56 on March 1, 2013 – the Combating Counterfeit Products Act.   The primary focus of this Bill is to improve the ability of copyright and trade-mark owners to combat the manufacture, importation, sale and distribution of counterfeit goods in Canada. 

 While the primary focus of the Bill is on counterfeit goods, the Bill calls for amendments to both the Copyright Act and the Trade-marks Act that will have effects beyond counterfeiting. 

Should this Bill go through as is, the changes to the Trade-marks Act (the “Act”) include the following: 

-         “Wares” will become “goods” and the definition of a “distinguishing guise” will be repealed

-          “distinctive” in relation to a trademark will describe a trademark that actually distinguishes or that is inherently capable of distinguishing the goods and services of the trademark’s owner from those of others

-          The references to “mark(s)” throughout the Act will now be references to a “sign or combination of signs”

-          “sign” will include a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign

-          A trademark will not be registrable if its features are dictated primarily by a utilitarian function (codifying recent case law)

-          In order to make a priority filing date claim, an applicant will no longer be required to have a real and effective industrial or commercial establishment in the country where the first application to register the trademark was filed. 

-          A Counterstatement to a Statement of Opposition will only need to state that the applicant intends to respond to the opposition.

-          It will be made clear that the Trade-marks Opposition Board can, in applicable circumstances, refuse some goods/services and let the remainder of the goods/services through to Registration, when dealing with Opposition proceedings

-          Divisional applications will be permitted, as well as mergers of registrations that stem from an original application that was divided

-         Applications for proposed certification marks will be permitted

-          The Bill contains many provisions relating to offences arising out of manufacturing, sale, possession, importation, distribution, and the like of counterfeit goods, labels and packaging, with fines of up to $1,000,000 or imprisonment for up to 5 years, if convicted on indictment.  There are also a number of provisions dealing with detention and destruction of infringing goods

There are, unfortunately, a number of  other provisions in the Act that could have been modified, deleted or clarified, which this Bill does not currently deal with.  Time will tell what changes are made to this Bill as it proceeds through the legislative process, with input from various committees and special interest groups.

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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