The Canadian Government Introduced Bill C-56 (Also Entitled the Combating Counterfeit Products Act) on March 1, 2013.

The Bill proposes significant changes to the Canadian Trademarks Act to amend a number of provisions to address issues primarily in non-traditional marks and in the area of anti-counterfeiting.

Specifically, the main amendments to the current Trademarks Act relate to the following:

  1. To broaden the definition of a trademark to include “signs” (inclusive of more subject matter than the traditional “mark”).
  2. The ability to register non-traditional trademarks, inclusive of sound, shapes, colour, holograms, taste, texture, scent (albeit with significant hurdles and affidavit evidence likely necessary to overcome objections concerning distinctiveness of these types of trademarks)
  3. The ability to file for certification marks on the basis of intention to use
  4. The ability to obtain registration of divisional applications (and retain the application for goods/services not yet in use)
  5. The ability to obtain a registration of divisional applications (while opposition proceedings may be ongoing for other contentious goods/services).
  6. The ability for the Registrar to correct obvious errors relating to registered trademark within 6 months from the time the entry is made (previously such amendment required a Court order).

The Bill also proposed significant changes to include provisions relating to Anti-counterfeiting measures.

The positive amendments include:

  1. Providing more effective border measures
  2. Providing more authority to Customs Officials to detain or seize counterfeit products
  3. Providing more authority to Customs Officials to communicate with brand owners
  4. Providing offence provisions of up to $1,000,000.00 or five years of incarceration

The amendments do not, however, include:

  1. A comprehensive recordation system for referral by Customs Officials of registered trademarks (similar to those in other countries)
  2. Provisions concerning trans-shipment of goods (where Canada is not the final destination)
  3. Efficient/effective means to deal with liability of brand owners/rights holders to pay for detention and destruction of counterfeit goods
  4. Efficient/effective direction on the costs of detention/destruction of counterfeit goods
  5. Efficient/effective direction on the sale of online counterfeit goods

Bill C-56 will now move to second reading debate and a vote for approval in principle. Once passed second reading the bill will be referred to committee for detailed consideration and possible amendments. The committee must pass the bill clause by clause and report it back to the House of Commons. The House then debates and passes the bill at third and final reading. Before becoming law the bill must be passed by the Senate. How quickly the bill becomes law will depend on a number of factors including opposition to the bill in its current form. Assuming there is general acceptance of the legislation by stakeholders the bill may become law by the end of the year.

Other Author

Theresa M. (Tracy) Corneau

Expertise

Intellectual Property
Trademarks