Canadian Trademark Blog

Maintained by Clark Wilson LLP

Combating Counterfeit Products Act Receives Royal Assent

By In Branding, Counterfeit goods, Famous Marks, Foreign Protection, Legislation, Protection & Enforcement

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.

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

By In Legislation, Protection & Enforcement, Registration, Trademark Oppositions

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

By In Legislation, Protection & Enforcement

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.

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Official Marks Up For Review

By In Legislation, Registration

A Private Members Bill was introduced in Canada’s federal parliament yesterday, which, if passed, will result in significant amendments to the official mark provisions in the Trade-marks Act.  Section 9(1)(n)(iii) of that Act currently sets out a very simple procedure whereby public authorities can attain official mark status for virtually any mark that they have adopted and used.  Once attained, official mark status prevents other parties from adopting, using or registering the same or a very similar mark in association with any wares (goods) or services, unless the public authority consents.  Under the current Act, official mark requests cannot be opposed, there is no specified term or renewal process for such status and there is no process for expunging an official mark if it is no longer in use, unless the public authority voluntarily abandons that status.

Bill C-611 would, if passed, add a definition of public authority to the Act and set out an opposition procedure for third parties to challenge official mark requests.  It would also provide for a 10 term for such status, with the ability to renew for further 10 year periods, each of which could also be opposed.

Time will tell if this Bill gains any traction.  The Member who introduced the Bill is with the minority Liberal party.  This Bill is unrelated to the wide ranging changes to the Act that are set out in Bill C-31.

Fumbling Towards Accession: Canadian government proposes massive trademark law overhaul

By In Legislation

This post is the first in a series discussing proposed changes to Canadian trademark law.

The Canadian Government dropped a bombshell on the trademark community on March 28, 2014, proposing massive changes to the Canadian Trade-marks Act (the Act), such changes being buried in a budget bill—namely, the Economic Action Plan 2014 Act, No. 1 (Bill C-31).  The immediate response from practitioners and other stakeholders in the trademark space was one of consternation: the changes are extensive, and are being introduced with virtually no notice to stakeholders about these changes prior to the introduction of the bill.

According to Federal Government sources,  the changes  are intended to prepare Canada for accession to the Madrid Protocol, the Nice Agreement and the Singapore Treaty—and Canada has telegraphed its planned accession to these agreements for several years.  However, many of the changes required for this purpose were already contained in Bill C-8, the Combating Counterfeit Products Act, which is expected to be enacted in the next few months.  Bill C-31 contains many other proposed revisions to the Act that go far beyond what is required for accession to the above Treaties, and appear to be directed more at cost cutting for the benefit of the Federal Government.

Rather than simply listing some or all of the proposed changes, we have decided to examine, in some detail, the likely impact of the changes in a series of posts.  In this first post, we examine some of the effects that the changes will have on the clearance of trademarks in Canada.  In future posts we will examine the anticipated effects of Bill C-31 on Applications for Registration of trademarks in Canada, on Opposition practice, and on post-registration matters.  We will attempt to do all of this from the perspective of prospective applicants, current applicants (where applications have been filed prior to Bill C-31 coming into force), existing registrants and other interested parties.

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Just in time for the Olympics – a Race to the Trademark Podium

By In Case Law, Famous Marks, Protection & Enforcement

As we approach the opening ceremonies of the 2014 Olympic Winter Games in Sochi, the Canadian Olympic Committee (COC) has launched a lawsuit against outdoor apparel maker The North Face in the British Columbia Supreme Court, over allegations that it is infringing on Olympic trademarks through ambush marketing techniques.

The COC is seeking an injunction against The North Face and unspecified damages.  Readers of this blog will recall that the 2010 Winter Olympic Games in Vancouver/Whistler featured many similar skirmishes and special legislation enacted to assist the COC in its ongoing battle against ambush marketing.

As reported in the Globe and Mail, the North Face is not a sponsor of the Olympic games, but introduced a new line of clothing in November 2013.  The clothing line, originally launched as the Villagewear Collection, was renamed as the International Collection in response to complaints by the COC. 

The clothing line, which includes jackets, toques and bags, is decorated with the colours and flags of various countries. This includes items bearing the Canadian flag which feature the colours red and white.  Some items featured a patch with the symbol “RU 14” which, according to the COC, is a reference to the Winter Olympic games in Sochi, Russia.  Other merchandise showed a world map with a red star where Sochi is located.  A t-shirt featured the date of the opening ceremonies for the Games.

Canadian Government Tables 5 IP Treaties in the House of Commons

By In Foreign Protection, Legislation

The Canadian Government tabled 5 intellectual law Treaties in the House of Commons on January 27, 2014.   The purpose of this action is for Canada to harmonize its trademark, patent and industrial design laws with those of many other countries.

The Treaties tabled are as follows:

The first three Treaties in particular will have significant impacts on the procedures for trademark applications and registrations in Canada.   The tabling of these Treaties is the first procedural step towards their ratification and implementation by the Government of Canada.  Implementation will require amendments to Canada’s existing IP legislation, which could take a long time to be approved.  The Canadian Intellectual Property Office published a paper in January of 2012 on the changes required to the Trade-marks Act in order for Canada to adhere to the Madrid Protocol.  Until such amendments are approved by the Canadian Parliament, none of these Treaties will be binding in Canada.