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Proposed Anti-Counterfeiting Bill Includes Wide Sweeping Changes to the Trade-marks Act

Author(s): Barry Fong, Donna White

Mar 5, 2013

On March 1, 2013, the Canadian Government introduced Bill C-56, Combating Counterfeit Products Act.  This Bill, which is being promoted by the Government as a means of reducing the presence of, and trade in, counterfeit goods in Canada, also introduces wide sweeping amendments to the Trade-marks Act.

The changes proposed to the Trade-marks Act are stated to be intended to foster innovation and creativity by simplifying the registration process for trade-mark owners, providing protection for non-traditional marks and introducing new civil and criminal remedies for counterfeiting and related activities supplemented by powers of search, seizure, detention and forfeiture of offending goods. However, many of the amendments proposed in this Bill appear to be housekeeping matters not directly related to combating counterfeit activities.

The principal highlights of the Bill which will be of interest to trade-mark owners include:

  • the modernization of certain definitions and the relaxation of formal filing requirements to permit or facilitate registration of non-traditional trade-marks including scents, tastes, textures, holograms, three dimensional shapes and modes of packaging goods. Also among the non-traditional marks, Bill C-56 expressly recognizes the registrability of sound marks, which the Canadian Trade-marks Office began to accept for registration  last year;
  • the ability to file applications to register certification marks on a proposed use basis;
  • the expansion of the exclusive rights of owners of registered trade-marks to provide a civil cause of action for the unauthorized manufacture, possession, importation, exportation or attempted exportation of goods which bear a trade-mark identical to or confusing with a trade-mark registered for such goods;
  • amendments to the procedures applicable to trade-mark oppositions to permit the Registrar to strike all or part of a statement of opposition and to simplify the form of a counterstatement filed in response to an opposition;
  • the ability to divide applications to facilitate the issuance of an application to registration for limited goods or services that were within the scope of the specification at the date of advertisement and later merge registrations that stemmed from the same original application;
  • a provision conferring upon the Registrar the power to correct certain errors on the register within six months from the date on which the entry was made;
  • the introduction of new criminal offences punishable by fines or imprisonment for the manufacture, sale, importation or export of counterfeit goods or labels or packaging intended to be use in association with the sale, distribution or advertising of counterfeit goods; and
  • the introduction of a new procedure which will permit the owner of a registered trade-mark to file a request with the Minister of Public Safety and Emergency Preparedness for assistance in pursuing remedies to restrain the importation or export of certain counterfeit goods.  As a corollary, the Bill provides enhanced powers to customs officers to detain goods suspected of being counterfeit and to the courts to deal with and grant relief in connection with the seizure and detention of such goods. 

Further information about the provisions of Bill C-56 as they relate specifically to counterfeit goods can be found in the Osler Update “Government Introduces Proposed Anti-Counterfeiting Legislation to Strengthen Rights of Copyright and Trade-mark Owners ”.

If you have any questions on the implications of the subject matter of this Osler Update, or you wish to discuss further, please contact Donna White or Barry Fong.