Canada: Bill C-56 Tacks On Significant Amendments To Trade-Marks Act

On March 1, 2013, Bill C-56 was introduced in the House of Commons. As might be expected from the short title of the proposed act (Combatting Counterfeit Products Act), the majority of Bill C-56 is directed to amendments to the Copyright Act and the Trade-marks Act to add new civil and criminal remedies to curtail commercial counterfeiting activities. Update: The details of these new provisions are reviewed here.

 While the essence of Bill C-56 is clearly directed to counterfeiting, the legislation also proposes significant amendments to the Trade-marks Act (the TMA) that are unrelated to counterfeiting activities. The most significant of these other changes are highlighted below.

Expansion of What Items May Serve as a Trade-Mark

The proposed amendments would significantly expand the scope of a registrable trade-mark. A "trade-mark" would be defined (inter alia) as "a sign or combination of signs that is used by a person for the purpose of distinguishing or so as to distinguish their goods or services from those of others." The definition of the term "sign" confirms the expansion of items that can serve as trade-marks, 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." (As a consequence of this expansion, the express provisions regarding distinguishing guises would be deleted from the TMA.)

The nature of the evidence required to prove registrability is deliberately left vague in the proposed revisions, and a revised s. 32 would allow the Registrar to ask for any evidence that the Registrar needs to establish that a trade-mark is distinctive at the date of the filing of the application for registration. Similarly, the proposed revised s. 37.1 would give the Registrar the express right to refuse a trade-mark application because the trade-mark is not distinctive.

Expungement of a Mark that Would Limit Development of an Art or Industry

The proposed amendments would add a new s. 18.1 to permit an application to be made to the Federal Court for expungement of a registered mark, on the grounds that the "registration is likely to unreasonably limit the development of any art or industry". It will be interesting to review the debate on this provision to get further details on the "mischief" that this provision is meant to address.

Clarifications Regarding Utilitarian Features

The proposed amendments to s. 12(2) of the TMA include an express prohibition against registration of a trade-mark "if, in relation to the goods or services in association with which it is used or proposed to be used, its features are dictated primarily by a utilitarian function". Furthermore, s. 20 of the TMA would be amended to make it clear that registration of a trade-mark does not prevent a person from using any utilitarian feature embodied in the trade-mark.

Section 45 (Summary Cancellation) Proceedings

Currently, on request of a third party, a s. 45 notice requires the registrant to provide evidence of use of the subject registered trade-mark in association with all of the goods and services in the registration. The proposed amendments to s. 45(1) would provide the Registrar with the option to give notice to the registrant that it must provide evidence of use of the mark in association with only part of the goods or services specified in the registration.

Opposition Proceedings

The proposed amendments would clarify that a counterstatement need only state that the applicant intends to respond to the opposition. The amendments would also appear to require service of written representations at the same time that a party submits such representations to the Registrar in the opposition proceedings (rather than requiring the Registrar to forward such written arguments to the other party).

Associated Marks

The proposed amendments appear to dispense with the ongoing issues related to associated marks. Association is the statutory procedure by which CIPO permits the registration of two or more confusingly similar trade-marks by one owner. It is a precondition of the registration of the marks that they be owned by the same person or entity and remain so thereafter. Associated marks can be assigned or transferred, but must be all be transferred together, at the same time, to the same assignee. CIPO will refuse to record any assignment or other document which, if registered, would have the effect of placing associated marks in the hand of separate owners.
Section 15 of the TMA would be amended to state that "... confusing marks are deemed to be registrable if the applicant is the owner of all of the confusing trade-marks". The proposed deletion of the Registrar's obligation to note associated marks, and to ensure that subsequent changes in ownership or owner's name are made to every mark in a group of associated marks suggests that the Registrar will no longer prohibit such changes.

Changes to the Application Process

Bill C-56 would amend the TMA to allow for a number of changes in the application process, including:

  • The ability to divide applications (and further sub-divide divisional applications), and then re-merge such divisionals after registration. Each divisional application would be deemed to have the filing date of the original application, and the Registrar would have the power to set regulations to determine the date of registration and renewal for re-merged applications;
     
  • The right to file an application for a proposed certification mark, rather than waiting until after such a mark has been in use;
     
  • A requirement for applicants seeking to register word marks (or any combination of letters, numerals, punctuation marks, diacritics or typographical symbols), and who do not wish to limit their registration to any particular font, size or colour, to include a statement to the effect that they wish the trade-mark to be registered in standard characters; and
     
  • The potential of a one-week extension of time to the six-month priority filing date.

Amendments to Reflect Jurisprudence

A number of the proposed revisions appear to be directed to codifying the scope of Registrar's powers that have been decided by prior caselaw. For example, decades after s. 7(e) of the TMA was declared ultra vires, one of the proposed amendments would delete s. 7(e) from the TMA. Similarly, the proposed amendments expressly confirm that the Registrar has the right to issue a split decision in an opposition, and the right to refuse an application with respect to one or more of the goods or services specified in it and accept the application with respect to the others.

Section 38 of the TMA would be amended to make it clear that the Registrar does have the power to strike all or part of a Statement of Opposition on the grounds that it is not properly pleaded (or does not set out a ground of opposition in sufficient details to allow an applicant to reply to it). However, the proposed amendments would require that such a motion be made quite soon after receipt of a Statement of Opposition, because the Registrar's ability to strike all or part of a Statement of Opposition would have to be exercised prior to the filing of an applicant's counterstatement.

Housekeeping Matters

A number of the proposed amendments to the TMA are directed to better defining the Registrar's record-keeping obligations. For example, a new s. 29.1 of the TMA would provide the Registrar with the express right to destroy records relating to refused applications, abandoned applications, expunged registrations, inactive official mark registrations, and similar inactive files within 6 years after the date of the final decision that rendered those files inactive. Similarly, section 64 of the TMA is proposed to be amended to provide the Registrar of Trademarks with an express right to keep electronic records.

Section 41 of the TMA is proposed to be amended to provide the Registrar with a new and very helpful right to "correct any error in the entry that is obvious from the documents relating to the registered trade-mark in question that are, at the time of the entry is made, on file in the Registrar's office", provided that such correction is made within 6 months after an entry in the Register is made. Similarly, s. 48 of the TMA is proposed to be amended to allow the Registrar to "remove the registration of a transfer of a registered trade-mark on being furnished with evidence satisfactory to him or her that the transfer should not have been registered".
Currently, the Registrar of Trade-marks takes the position that he or she has no jurisdiction to make such changes, and the only way to correct such errors is by application to Federal Court. 

Finally, to reflect a more modern parlance, the TMA would be amended throughout to replace the word "wares" with the word "goods".

Conclusion

Bill C-56 has a significant road to travel before it passes into law, and the final version of the legislation may well change after debate at second reading, and a clause-by-clause review by a committee. We will continue to monitor the progress of this bill, and keep you advised as the bill progresses through the legislative process.

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.

Authors
Similar Articles
Relevancy Powered by MondaqAI
Blaney McMurtry LLP
Bereskin & Parr LLP
Davies Ward Phillips & Vineberg
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Blaney McMurtry LLP
Bereskin & Parr LLP
Davies Ward Phillips & Vineberg
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
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).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions