The Canadian federal government introduced significant proposed
changes to Canada's Trade-marks Act and, to a lesser
extent, its Copyright Act through Bill C-56, which had its
first legislative reading on March 1, 2013.
The legislation seeks to add new civil and criminal remedies as
well as new border measures in both Acts in order to strengthen the
enforcement of copyright and trade-mark rights, and to curtail
commercial activity involving infringing copies and counterfeit
In particular, both Acts will be amended to permit border
officials to detain goods suspected of infringing any trade-mark or
copyright, and provide for related enforcement proceedings and
remedies. In a similar vein, Bill C-56 seeks to add criminal
offences and remedies to the Trade-marks Act directed at
counterfeits similar to those that already exist in the
Copyright Act. In this regard, offences are proposed
regarding the manufacturing, sale, possession, importation and
distribution of counterfeit goods, labels and packaging, with fines
of up to $1,000,000 or imprisonment for up to five years.
In addition, building upon the Registrar of Trade-marks having
begun permitting the registration of sound marks in 2012, the
Trade-marks Act looks to be amended in a number of other
respects with the clear intent of broadening the nature and scope
of what can be registered as a trade-mark to all forms of what many
refer to as non-traditional trade-marks.
To accomplish this goal, the Act looks to delete the term
"mark," a term largely undefined in both the Act and the
jurisprudence, and replace it with the defined term
"sign," which "includes 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."
However, to build some limitations into the area, Parliament is
looking to amend the definition of "distinctive" and
grant the Registrar the power to reject an application on a
preliminary ground of distinctiveness. Currently, the Registrar
does not review an application for distinctiveness although an
application can be opposed on this basis. Furthermore, a trade-mark
will not be registrable if its features are dictated primarily by a
As part of this modernization, the concept and registration of
"distinguishing guises," currently a type of trade-mark
directed at the shaping, wrapping and packaging of wares, will be
deleted completely from the Act, and those types of marks will be
dealt with in a like manner to other non-traditional trade-marks.
The totality of changes is clearly meant to create flexibility and
allow for the registration of all types of non-traditional marks
but only if they are, in fact, distinctive.
The proposed changes also include allowing applicants to apply
for certification marks on a proposed use basis. Unlike
trade-marks, which can be applied for on a proposed use basis,
certification marks can currently only be applied for if in use.
Divisional applications will also be permitted, giving proposed use
applicants the flexibility of registering their mark for the goods
and services for which there has been use, without having to
abandon the application with respect to any of the other goods and
services claimed in the original application. Similarly,
divisionals will allow for the registration of a trade-mark for
non-contentious goods and services without delay while permitting
an opposition to proceed as against any contentious goods and
services contained in the original application.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
The prospect of an internal investigation raises many thorny issues. This presentation will canvass some of the potential triggering events, and discuss how to structure an investigation, retain forensic assistance and manage the inevitable ethical issues that will arise.
From the boardroom to the shop floor, effective organizations recognize the value of having a diverse workplace. This presentation will explore effective strategies to promote diversity, defeat bias and encourage a broader community outlook.
Staying local but going global presents its challenges. Gowling WLG lawyers offer an international roundtable on doing business in the U.K., France, Germany, China and Russia. This three-hour session will videoconference in lawyers from around the world to discuss business and intellectual property hurdles.
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).