Bill C-56 sneaks in changes to the Trade-marks Act
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.
Although the purpose of Bill C-56 is to add new civil and criminal remedies for trademark and copyright owners whose rights are infringed by commercial counterfeiting activities, the government is taking this opportunity to clean up some procedural problems with the Trade-marks Act and to expand the scope of registrable trademarks. These are important and overdue changes that are not related to counterfeiting.
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 trade-mark” 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.
“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.”
“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:
