The Canadian federal government introduced significant proposed changes to Canada’s Trade-marks Act and, to a lesser extent, its Copyright Act through Bill C-56, which had its first legislative reading on March 1, 2013.

The legislation seeks to add new civil and criminal remedies as well as new border measures in both Acts in order to strengthen the enforcement of copyright and trade-mark rights, and to curtail commercial activity involving infringing copies and counterfeit goods.

In particular, both Acts will be amended to permit border officials to detain goods suspected of infringing any trade-mark or copyright, and provide for related enforcement proceedings and remedies. In a similar vein, Bill C-56 seeks to add criminal offences and remedies to the Trade-marks Act directed at counterfeits similar to those that already exist in the Copyright Act. In this regard, offences are proposed regarding the manufacturing, sale, possession, importation and distribution of counterfeit goods, labels and packaging, with fines of up to $1,000,000 or imprisonment for up to five years.

In addition, building upon the Registrar of Trade-marks having begun permitting the registration of sound marks in 2012, the Trade-marks Act looks to be amended in a number of other respects with the clear intent of broadening the nature and scope of what can be registered as a trade-mark to all forms of what many refer to as non-traditional trade-marks.

To accomplish this goal, the Act looks to delete the term “mark,” a term largely undefined in both the Act and the jurisprudence, and replace it with the defined term “sign,” which “includes 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.”

However, to build some limitations into the area, Parliament is looking to amend the definition of “distinctive” and grant the Registrar the power to reject an application on a preliminary ground of distinctiveness. Currently, the Registrar does not review an application for distinctiveness although an application can be opposed on this basis. Furthermore, a trade-mark will not be registrable if its features are dictated primarily by a utilitarian function.

As part of this modernization, the concept and registration of “distinguishing guises,” currently a type of trade-mark directed at the shaping, wrapping and packaging of wares, will be deleted completely from the Act, and those types of marks will be dealt with in a like manner to other non-traditional trade-marks. The totality of changes is clearly meant to create flexibility and allow for the registration of all types of non-traditional marks but only if they are, in fact, distinctive.

The proposed changes also include allowing applicants to apply for certification marks on a proposed use basis. Unlike trade-marks, which can be applied for on a proposed use basis, certification marks can currently only be applied for if in use. Divisional applications will also be permitted, giving proposed use applicants the flexibility of registering their mark for the goods and services for which there has been use, without having to abandon the application with respect to any of the other goods and services claimed in the original application. Similarly, divisionals will allow for the registration of a trade-mark for non-contentious goods and services without delay while permitting an opposition to proceed as against any contentious goods and services contained in the original application.