Last Friday, Bill C-56 or the Combating Counterfeit Products Act was introduced for first reading by the Federal Government. While this bill is primarily focused on amending the Copyright Act and the Trade-marks Act to add new civil and criminal remedies and border measures in order to “strengthen the enforcement of copyright and trade-mark rights and to curtail commercial activity involving infringing copies and counterfeit trade-marked goods,” it will also amend the Trade-marks Act in other notable ways.
First, Bill C-56 expands the scope of what can be registered as a trade-mark. The primary definition of trade-mark is currently “a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others.” Bill C-56 proposes to change the definition of trade-mark to include “a sign or combination of signs that is used by a person for the purpose of distinguishing or so as to distinguish their goods or services from those of others.” The definition of sign will be added to the Trade-marks Act and a 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.” This open-ended definition will support a number of new trade-mark registrations.
However, the bill will also update the Trade-marks Act to expressly prevent the registration of trade-marks whose features are dictated primarily by a utilitarian function and will clearly state that the registration of a trade-mark does not prevent a person from using a utilitarian feature embodied in the trade-mark. These changes are in line with jurisprudence on this issue (for example, see the Supreme Court of Canada’s comments in Kirkbi AG v. Ritvik Holdings Inc., 2005 SCC 65).
Second, Bill C-56 will “streamline and modernize the trade-mark application and opposition process.” It will establish the filing date of a trade-mark application as the day on which the Registrar of Trade-marks has received an explicit or implicit indication that the registration is sought, information allowing the identity of the applicant to be established and the Registrar to contact the applicant, a description of the trade-mark, a list of the goods or services for which registration is sought, and any prescribed fees. If the application does not contain all the required information, the applicant has a fixed period of two months from the date of notice to submit the outstanding items. If these items are not received in this timeframe, the application is deemed never to have been filed and the applicant will lose their application fees. The bill will also give the Registrar the power to correct obvious errors in the register within six months after an entry in the register is made.
The Trade-marks Act will be amended to allow a trade-mark application to request the Registrar to strike out all or part of a statement of opposition if it doesn’t fall within the established grounds for opposition or if it fails to set out a ground of opposition in sufficient detail to allow the applicant to reply to it. When an applicant files a counter statement to a statement of opposition, it will only need to state that the applicant intends to respond to the opposition. The applicant can then, as under the current Trade-mark Act, respond to the opposition with evidence in due course.
Finally, the Federal Court will expressly be given the power to expunge the registration of a trade-mark if the court determines that the registration is likely to unreasonably limit the development of any art or industry. Any ‘interested person’ will be able to apply to the court to have a trade-mark registration expunged for this reason.
As the bill is still in its early stages, it is likely that many of the initial provisions will change before they eventually receive royal assent and come into force. Keep checking The Medium for updated information on Bill C-56′s progress.