On March 1, 2013, the Canadian government introduced amendments to the Copyright Act and the Trade-marks Act as Bill C-56, Combating Counterfeit Products Act. The proposed changes serve two main objectives: (i) to enact legislation that targets counterfeit products coming into Canada in the hope of preventing such counterfeits in the interest of public safety and health; and (ii) to make technical amendments to the Trade-marks Act to allow registration of non-traditional trademarks (such as sound marks) and to streamline and modernize the trademark application and opposition process.
Proposed Amendments to Combat Counterfeiting
Bill C-56 proposes numerous amendments to the Copyright Act and the Trade-marks Act to combat counterfeiting. The following features are of particular significance:
New tools for owners. The bill creates new civil causes of action with respect to infringing copies and counterfeit trademarked goods. Specifically, rights holders will be able to seek civil remedies for the manufacture, distribution and possession of counterfeit goods by those who intend to sell them.
New criminal offences. New criminal offences for possessing, selling, renting, distributing and exporting counterfeit goods will be added to the Copyright Act. These offences will be subject to tough penalties: fines of up to $1 million and/or up to five years’ imprisonment. The bill also creates new criminal offences for trademark counterfeiting that are similar to the existing offences under the Copyright Act. Specifically, the bill creates offences to prohibit the possession, manufacture, sale, distribution, import and export of infringing copies of counterfeit trademarked goods, packaging and labels.
Exceptions. The new prohibitions will be subject to a number of exceptions, including transiting goods, goods imported for personal use and those for which the rights holder’s consent is obtained.
New powers for customs officers. The bill will give the Canada Border Services Agency (CBSA) expanded powers of search, seizure and interception by creating a system that will allow trademark and copyright (but not patent) owners to submit a "request for assistance" to the Minister. Through this system, rights holders will be able to request that customs officers at the border temporarily detain commercial shipments suspected of containing counterfeit goods. Customs officers will also be authorized to give a sample of the shipments and certain information about the shipments and their importers to the rights holders. This will enable the rights holder to begin court proceedings. The warehousing or destruction of shipments would be at the rights holder’s cost. The CBSA will not investigate or impound shipments if Canada is not the final destination.
Proposed Technical Amendments to the Trade-marks Act
Apart from the noteworthy amendments aimed at combating counterfeiting, Bill C-56 contains a number of amendments to the Trade-marks Act. These technical amendments relate to the registration of non-traditional trademarks (e.g., colours, holograms, sound, scent and texture) and limit the registration of trademarks that are utilitarian or not distinctive in fact. They will also simplify the overall trademark registration process by streamlining some of the requirements and modernizing the process to facilitate electronic documents. The bill will also give the Trade-marks Opposition Board the power to strike all or part of a statement of opposition and will change the filing requirements for written representations in opposition proceedings (requiring written representations to be served on the adverse party rather than merely filed with the Board, as was the previous practice).