On March 1, 2013, the Canadian Government introduced Bill C‐56, “An Act to amend the Copyright Act and the Trade‐marks Act and to make consequential amendments to other Acts”. The proposed legislation will be known by its short title, the Combating Counterfeit Products Act (“CCP Act”). As the name suggests, the CCP Act deals primarily with provisions designed to strengthen the enforcement of copyright and trade‐mark rights and to curtail commercial activity involving pirated and counterfeit goods, notably through improved customs and border measures. For more information on the anticounterfeiting aspects of the CCP Act, please refer to the previous article “Counterfeiters Beware‐Canada Introduces New Law to Deal with Counterfeit and Pirated Products”.
This article will focus only on the other amendments being proposed to the Trade‐marks Act, which will expand the scope of what can be registered as a trade‐mark, allow the Registrar of Trade‐marks to correct errors that appear in the Trade‐marks register, and streamline the trademark application and opposition process.
The most significant proposed revision to the Trade‐marks Act relates to the very definition of a “trade‐mark”. Currently the Trade‐marks Act defines a trade‐mark as being:
- 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 him from those manufactured, sold, leased, hired or performed by others,
- A certification mark,
- A distinguishing guise, or
- A proposed trade‐mark;
Under the CCP Act this definition would be much broader in scope, allowing for the registration of “signs”. Bill C‐56 proposes that the definition of a trade‐mark be the following:
- 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,
- A proposed trade‐mark, or
- A certification mark;
“Sign” is then defined as including “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 amendment dramatically changes the scope of what can be registered as a trade‐mark and includes many items which were previously considered “non‐traditional”. Provisions dealing with distinguishing guise trade‐marks (unique shapes of products, containers, wrapping, or packaging, such as the shape of a Coca‐Cola bottle), will be deleted, because such trade‐marks are now covered under the definition of a “sign”.
This provision will provide trade‐mark owners a greater ability to protect and enforce their brand, including the right to register distinguishing features of their brand identity that used to be considered incapable of registration.
Other amendments are proposed in Bill C‐56 that will change certain aspects of trade‐mark practice. For example, certification marks can presently only be applied for on the basis of actual use, and the revisions would allow for certification marks to be filed based on proposed use. As well, the concept of divisional applications is being introduced, whereby an applicant may limit the original application to one or more of the goods or services claimed, and file a divisional application with the remaining goods and services. This procedure would allow trade‐marks to proceed to registration in respect of uncontested goods and services, while opposition proceedings or objections continue in respect of the contested goods and services. The advantage is that the divisional application keeps the filing date of the original application. Divisional applications may be further divided, so that multiple divisional applications are possible.
Finally, Bill C‐56 proposes several amendments to the Trade‐marks Act designed to streamline and simplify the trade‐mark application and opposition procedures. For example, counterstatements in opposition proceedings need only state that the applicant intends to respond to the opposition, and a substantive reply would no longer be required. Also, the Registrar is given express power to correct errors in any entry in the register.
While the Bill is not law yet, the fact that it was introduced by the Canadian Government means that it will likely move quickly through the parliamentary process and pass during this session of parliament.
Once proclaimed, this new legislation will be a positive change for trade‐mark rights holders. Not only will it increase their ability to protect against the import, export and distribution of pirated and counterfeit goods, it will broaden the scope of their trade‐mark protection for their brands and make the entire trade‐mark application and opposition procedure more modernized and streamlined.