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December 1, 2013 Vol. 68 No. 22 Back to Bulletin Main Page

CANADA: Combating Counterfeit Products Act and CETA

Major changes appear to be coming to Canada’s trademark laws as a consequence of two major developments in the last week of October.

On October 28, 2013, the Canadian Combating Counterfeit Products Act (Bill C-56), which was discussed in June 15 and July 15 INTA Bulletin, was reinstated before Canada’s Parliament as Bill C-8. (Also see “Association Testifies Before Canadian Parliament,” page 1).

Bill C-8 is intended to give trademark and copyright owners additional options for dealing with the importation and sale of counterfeit goods. The Bill provides the owner of a registered trademark and/or a copyright with access to an assistance procedure whereby goods are detained by customs officials for up to ten days. During this period, the owner may receive a sample of goods and request information to assist in identifying the owner/source, and the goods will remain in detention only if the rights owner commences a civil action.

The Bill also addresses several commonly mentioned irritants, including getting rid of “associated marks” that complicate partial assignment of marks deemed to be “associated” and permitting “division” of applications to permit the mark to proceed to registration for some goods/services, while leaving others pending. The Bill also opens the way for changes to opposition procedure.

In a second development, on October 29, 2013, a more detailed outline of the Comprehensive Economic and Trade Agreement (CETA)—the Technical Summary of the Negotiated Outcomes: The Canada-EU Comprehensive Economic and Trade Agreement—was tabled by the Canadian government. CETA includes provisions on civil remedies and border enforcement in line with Canada’s existing regime and with that set out in Bill C-8. CETA also notably addresses geographical indications (GIs) and the possibility of changes to come with respect to international treaties.

     1. Canada will commit to expand the scope and number of protected geographical indications and will  
         extend limited protection to others. Currently, Canadian trademark law protects GIs only in relation to
         certain specified wines and spirits. With CETA, Canada will extend GI protection to certain meats and
         cheeses, but will preserve the ability to use what have become common English or French
         words used by Canadians to identify certain types of food. The changes to Canada’s GI laws will also
         not affect trademarks containing GIs that are already on the Canadian Register.

         Canada will also extend limited protection to certain cheeses, but will allow continued use on   
         packages where these names already appear and allow future use of these names if combined with
         terms like “kind,” “type,” style” or “imitation.” Further, Canada will preserve the ability to use
         components of certain multipart terms, such as “Brie,” but not “Brie de Meaux.”

     2. The Technical Summary suggests that Canada has made a “best endeavours commitment” to
          “make all reasonable efforts” to comply with international agreements and standards. To this extent,  
           CETA specifically mentions, but the detailed outline provides no further commentary on, the Madrid
           Protocol, the Singapore Treaty and the Hague Agreement on industrial designs.

Notably, a March 2013 Canadian Parliamentary Committee report recommended that, “to support Canadian businesses on the global stage and ensure the administration of Canada’s IP regime is internationally compatible,” Canada “ratify the following key international agreements: … the Madrid Protocol and Singapore Treaty for trademarks, and the Hague Agreement.” Taken together with the language in the Technical Summary, it appears that Canada will be taking steps to seriously consider accession to both the Madrid Protocol and the Singapore Treaty.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2013 International Trademark Association