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).
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
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
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.
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