Tuesday, March 12, 2013

Amendments to new Trade-Marks Act Tabled

Tuesday, March 12, 2013
Canadian intellectual property practitioners were slightly surprised on March 1, 2013 with a new bill titled “Bill C-56 – the Combating Counterfeit Products Act.” These amendments are largely directed to harmonizing Canadian copyright and trade-mark laws relating to counterfeit goods, thereby bringing Canada closer to compliance with its treaty obligations under the hotly debated Anti-Counterfeiting Trade Agreement (“ACTA”).

Although there had been rumblings throughout the profession that Parliament would turn its attention to Canadian trade-mark law reform once the much debated Copyright law reforms had been effectively dealt with, an informal survey of my professional colleagues indicates that the timing of this new bill was at least somewhat unexpected.

The 52 page bill contains a host of changes to both trade-mark and copyright law, including some of the following selected highlights from the perspective of the Trade-marks Act (“the Act”):

  • the term “goods” shall be used in place of the term “wares”; 
  • distinguishing guises are no longer available under the Act; 
  • use of the term “distinctive” in relation to a trade-mark will refer to a trade-mark that actually distinguishes or that is inherently capable of distinguishing the goods and services of the trademark’s owner from those of others; 
  • interestingly, the term “mark(s)” has been replaced throughout the Act has been replaced with the term “sign(s)”;
  • the term sign has been defined as “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”; 
  • primarily functional trade-marks will not be registrable;
  • foreign Applicant’s will no longer be required to be domiciled in the country where the priority filing was made in order to make a priority claim; 
  • In trade-mark opposition practice, a counterstatement need merely to state the Applicant’s intent to respond to the Opponent’s statement of opposition; and 
  • The Opposition Board will be explicitly empowered to allow registration with respect to some goods/services in an application and refusal with respect to other goods/services. 

All this results in the most sweeping changes to Canadian trade-mark law in over 50 years.

Early criticism of this new legislation has been divided along predictable lines – with rights holders finding the bill lacking in substantive changes while academics generally are of the opinion that the bill overreaches. As a young practitioner, I am reticent to make sweeping judgment on the merits of the proposed changes until I have the opportunity to scrutinize how these changes will affect my day-to-day practice; however there are a few points I think that we can all take away from this new bill.

The current Parliament is, in the very least, considering moving towards ratifying ACTA. Further, Parliament intends to take the issue of piracy and counterfeiting seriously, and is willing to spend political capital to criminalize these activities under the trade-mark and copyright legal frameworks where required to achieve this goal.

Finally, although it may not be profound to point out that when stakeholders on both sides of the debate are left unsatisfied with proposed changes to Canadian intellectual property law, one cannot help but wonder – did Parliament indeed strike an appropriate balance this time?

By Adam Tracey