Bill C-56, the Combating Counterfeit Products Act, was introduced today with amendments to the Copyright Act and Trade-marks Act, to among other things, allow the Canada Border Services Agency to detain suspected shipments and act on requests from rights holders. It will also “expand the scope of what can be registered as a trade-mark, allow the Registrar of Trade-marks to correct errors that appear in the trade-mark register, and streamline and modernize the trade-mark application and opposition process.”
Bill C-56 was introduced this afternoon for first reading and the full text is available.
The government press release highlights the border control/anti-counterfeiting aspects of the Bill:
- giving border officers the authority to detain suspected shipments and contact the rights holders;
- allowing 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;
- providing new criminal offences for the commercial possession, manufacture or trafficking of trademark counterfeit goods;
- providing legitimate owners with new tools to protect their rights and take civil action against infringers;
- creating new offences for trademark counterfeiting; and
- providing better tools to investigate commercial counterfeiting.
Although not mentioned in the government press release or in the Bill, many of the changes proposed in the legislation are similar to the provisions of the controversial Anti-Counterfeiting Trade Agreement. I expect there will be significant commentary on this Bill when people have time to review the provisions including on the degree of oversight of border agents, the scope of the personal use exception and the new criminal provisions.
Changes to the Trade-marks Act
In the Trade-marks Act, Bill C-56 would modify the definition of ‘distinctive’, ‘trade-mark’ and replace ‘wares’ with ‘goods’ and ‘mark’ with ‘sign or combination of signs’ or ‘trade-mark’ throughout the Act. Also, Section 7(e) which has been declared unconstitutional would be formally repealed.
Utilitarian function would be introduced as limit on registrability of all trade-marks in Section 12 and as an exception in Section 20. Section 32 is expanded to allow the Registrar to require evidence of distinctiveness if the trademark is (i) the three-dimensional shape of any of the goods specified in the application, or of an integral part or the packaging of any of those goods, (ii) a mode of packaging goods, (iii) a sound, (iv) a scent, (v) a taste, (vi) a texture, or (vii) any other prescribed sign. The amendments would also introduce the concept of a “divisional application” for trademarks in Section 39.1.
These amendments are only just published and so will likely be changed as the Bill works its way through the House of Commons and Senate. The above comments in this post are based on a preliminary review so please confirm all details with the text of the Bill. Unfortunately, Bill C-56 does not remove the hyphen in “trade-mark”.
At the risk of telling tales out of school, I was in the Government at the time the hyphen was introduced. As soon as I learned about it, I marched downstairs into the office of the responsible Department of Justice official who decided to make this change. I strongly protested, but to no avail. Indeed, I quickly became a hyphen convert. Then and now, I think that the hyphen is perfectly practical and perfectly Canadian.
The Americans refer to “trademark” – all one word. The Brits refer to “trade mark” – two words. Which is preferable? How can one possibly be expected to remember which one is “right” and be consistent in the face of two such blatantly conflicting great traditions? Is Canada not a sovereign country?
The ingenious Canadian answer was to put a pox on both their houses, to boldly go where no other country has ever gone, and to put a hyphen in the middle. We now know how to spell “trade-mark” in Canada. We spell it with a hyphen. That’s easy to remember. Even for patent and copyright lawyers.
We are Canadian. We are distinct. We are sovereign. We are hyphenated.
HPK