Canada: Important News For Brand Owners In Canada: Trademarks And Anti-Counterfeiting Legislation On The Road To Implementation

Public Consultation opens on proposed amendments to Canadian Trademark Regulations

As reported in our June 20, 2014 IP Update, significant amendments to the Trademarks Act received Royal Assent on June 19, 2014. The amendments will come into force on a date to be set by Order in Council and it is now expected that implementation of all of the amendments will take place in late 2015 or early 2016. 

The Canadian Intellectual Property Office (CIPO) has now taken the next step toward implementation. More specifically, CIPO opened pre-consultation on amendments to the Trademark Regulations on October 1, 2014. CIPO's discussion document, including information for those wishing to make submissions in respect of the proposed amendments, has been posted on the CIPO website. The pre-consultation is scheduled to end November 30, 2014. 

We briefly discussed the proposed amendments to the Trademarks Act in IP Updates dated March 31, 2014 and June 16, 2014. 

Combating Counterfeit Products Act passes third reading in Canadian parliament

After sitting relatively dormant in the Canadian parliament since January of this year, Bill C-8, the Combating Counterfeit Products Act, was passed by the House of Commons and received first reading in the senate on October 2, 2014. The Bill was originally introduced on March 1, 2013 as Bill C-56 and reintroduced as Bill C-8 on October 28, 2013. While Bill C-8 originally progressed quickly, progress slowed in the early part of this year and many people believe that the delay was due to the introduction of the changes to the Canadian Trademarks Act discussed above. 

It now appears that the Canadian government again intends to move quickly in passing the Combating Counterfeit Products Act into law. That Act proposes amendments to the Canadian Trademarks Act and Copyright Act to improve the prohibitions and offences directed to addressing the problem of product counterfeiting in Canada. The changes include very significant amendments to the border provisions available to stop counterfeit products from entering Canada. For a more detailed analysis of the provisions of the Act, reference may be had to our March 25, 2013 IP Update. 

While some concerns have been raised regarding the provisions of Bill C-8, reform of Canada's anti-counterfeiting laws are overdue and the anti-counterfeiting community in Canada welcomes the apparent renewed interest in the issue by the government of Canada.

For further information, please contact us.

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.