Significant changes to both the Canadian Trademarks Act and the Copyright Act may be coming in the near future, as the federal government seeks to bring Canada in line with the requirements of the Anti-Counterfeiting Trade Agreement (ACTA) by introducing Bill C-56—the Combating Counterfeit Products Act.
One of the most significant changes is the amendment to the definition of a trademark. A trademark is currently defined as a “mark”, a “certification mark”, a “distinguishing guise” or a “proposed trademark” used for the purpose of distinguishing a person’s wares or services from those of others. By changing the reference to “mark” throughout the Act to the word “sign”, Bill C-56 will significantly expand the scope of a registrable trademark.
“Sign” is 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”. The express provision for “distinguishing guise” has been removed, leaving only “three-dimensional shapes” in the general category of signs, so the requirement of acquired distinctiveness at the filing date for these kinds of marks no longer applies.
Instead, the proposed changes expressly prohibit the registration of trademarks whose “features are dictated primarily by a utilitarian function” in relation to the goods or services in association with which they are used or proposed to be used.
A corresponding change to the infringement provisions of the Act, Section 20, clarifies that no-one can be prevented from using any utilitarian features embodied in registered trademarks.
Other changes include:
- Removing the procedural issues relating to associated marks. Currently in Canada, marks that are deemed to be confusing may only co-exist on the register if they are owned by the same entity. The registrar “associates” such marks according to the statutory procedure in the Act, which procedure also prevents the recordal of the transfer or assignment of a trademark unless the same change is recorded against all associated marks. The proposed changes remove the registrar’s obligation to associate marks on the register, which suggests that the obstacles to the recordal of transfers or assignments of individual marks will also disappear.
- Recognition of proposed certification marks.
- The ability to divide (and sub-divide) applications, and re-merge divisionals into a single registration.
- Permitting summary cancellation proceedings against only a partial rather than the entire statement of wares or services set out in the registration.
- Replacing the word “wares” with the word “goods” throughout the Act.
- Permitting the registrar to correct an entry on the register when it is obvious the error originated at the Canadian Intellectual Property Office at the time of registration, or to remove the registration of a transfer of a registered trademark on being furnished with evidence satisfactory to him or her that the transfer should not have been registered. Currently, the registrar does not have the jurisdiction to make such changes without the intervention of the Federal Court.
The anti-counterfeiting provisions of Bill C-56 include expanding the criminal provisions of the Copyright Act, introducing criminal offences under the Trademarks Act, and amending the Criminal Code to allow police to seek judicial authorisation for the use of wiretaps during the investigation of these new offences . Opponents of ACTA are especially critical of the bill’s increased border detention powers, and concerns about excessive criminalisation and excessive border enforcement measures are already widespread. It is important to note these changes are far from certain at this time. Bill C-56 will undergo detailed review and debate before passing into law and the final version of the legislation may well be quite different from this initial proposal.
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