Today the Canadian Government announced the introduction of a bill to amend the Trade-marks and Copyright Act to combat counterfeiting. However in addition the Bill makes substantial amendments to the Trade-marks Act which will take some time to fully consider. The Bill amends the definition of trade-mark to specifically refer to packaging, colour, shape, sound, scent, hologram or moving images. The Bill proposes amendments to limit the registration of such marks that have not been proven distinctive, or which are dictated “primarily by a utilitarian function”. In addition the definitions of “distinguishing guise” and “wares” have been removed, the definition of certification mark changed and the concept of a “proposed certification mark” introduced for the first time.

Anti-counterfeiting

The Bill (C-56) has been titled the Combating Counterfeit Products Act.

Lax Canadian laws (particularly with respect to border enforcement) had frequently been a subject of criticism from among Canada’s trading partners and increased power for border officials had been recommended by a number of parliamentary standing committee reports.

According to the government press release:

“The Bill will reduce trade in counterfeit goods by providing new enforcement tools to strengthen Canada's existing enforcement regime, both at and within our border. It will also bolster our existing protections against commercial counterfeiting activities.”

Specifically, this Bill will:

  • give border officers the authority to detain suspected commercial shipments and contact the rights holders;
  • allow Canadian businesses to file a request for assistance, with the Canada Border Services Agency (CBSA), in turn, enabling border officers to share information with rights holders regarding suspect shipments;
  • provide new criminal offences for the commercial possession, manufacture or trafficking of counterfeit trademark goods;
  • provide legitimate owners with new tools to protect their rights and take civil action against infringers;
  • create new offences for trademark counterfeiting; and
  • provide better tools to investigate commercial counterfeiting.”

The Bill will include new powers for CBSA to search and seize and destroy counterfeit goods. However under the Bill as drafted, the warehousing or destruction of goods will be at brand owner’s cost and the CBSA will not investigate or impound shipments where Canada is not the final destination. The Bill provides a specific exception at the border for individuals importing or exporting counterfeit trademark goods, which are intended for personal use, as part of their personal baggage.

Trade-mark amendments

Many of the proposed Trade-mark Act amendments do not specifically deal with anti-counterfeiting enforcement. The government has taken the oportunity to significantly expand the types of trade-marks that can be registered. This follows upon the Trade-marks Office own initiative last year to interpret the Act to allow such marks. However, along with the expansion of the types of trade-marks that may be registered, the government has taken steps to more explicitly limit the registration of trade-marks that are utilitarian or are not distinctive in fact. Many of the amendments make explicit that marks which are “dictated by a utilitatarian function” are not registrable and that such registration does not prevent a person from “using any utilitarian feature embodied in the trade-mark”. Such limitations had previously only applied with respect to the now soon to be defunct “distinguishing guise”. In addition the Federal Court is given explicit power to expunge (cancel) any registration that is “likely to unreasonably limit the development of any art or industry”.

Concurrent with this, the Registrar will be given expanded powers to require evidence that any trade-mark is distinctive if the trade-mark consists exclusively of a single colour or combination of colours without delineated contours or the trade-mark consists exclusively or primarily of a shape, packaging, sound, scent, taste, or texture.

In respect of oppositions, the Opposition Board is given power to strike all or part of a statement of opposition and opponents will be required to serve the written representations on each other rather than to file with the Board as was the previous practice.

Finally for the first time, Canadian applicants will be able to file a divisional trade-mark application limiting the original application to some of the goods or services and filing a divisional for the remainder.

The enforcement provisions have been summarized above.

A link to the Bill is here.