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July 15, 2013 Vol. 68 No. 13 Back to Bulletin Main Page

CANADA: Bill C-56 Poised to Make Its Mark

Canada’s federal government recently introduced Bill C-56, the Combating Counterfeit Products Act. The Bill amends the Copyright Act and the Trade-marks Act to strengthen anticounterfeiting measures available to brand owners, to allow for nontraditional marks, to introduce technical changes in trademark terminology and the prosecution of trademark applications, and to simplify some aspects of trademark opposition proceedings. Certain provisions of the Bill that are aimed at counterfeiting were reviewed in a previously published article.

Highlights of the Bill with respect to trademark prosecution and oppositions include the following:

  • The definition of “trade-mark” will be expanded to include the term “sign or a combination of signs,” which expressly encompasses nontraditional marks such as color, smell, taste, texture, sounds, moving images and holograms.
  • “Wares” will become “goods,” using parlance found in the trademarks legislation of many other countries.
  • The Registrar of Trade-marks will be able to correct obvious errors in trademark registrations within six months of issuance. The Registrar will also be able to reverse transfers of trademarks to new owners upon receipt of satisfactory evidence demonstrating that the transfer should not have been recorded in the first place.
  • The Registrar will have the ability to grant an extension of time of up to one week, to permit an applicant to file an application claiming Paris Convention priority. It will also no longer be necessary for the applicant to have a real and effective industrial or commercial establishment in the country where the application that is being relied on for priority was filed.
  • Divisional applications will be possible. This will allow prior use and proposed use claims that are contained in one application to be “divided” in order to permit the prior use claims to proceed to registration while the proposed use claims continue in a separate application. Mergers of registrations that stem from an original application that was divided will also be permitted.
  • It will be possible to file certification mark applications on a proposed use basis. Currently, such applications can be based only on prior use in Canada.
  • Counterstatements in opposition proceedings will need only state that the applicant intends to respond to the opposition. The current practice of many practitioners is to address each and every allegation in the Statement of Opposition.

The Trade-marks Opposition Board will be empowered, in certain circumstances during an opposition, to refuse some goods/services and to allow the mark to issue to registration for the remainder of the goods/services.

The Bill has undergone only a first reading, and there may be significant changes to the legislation before it is implemented. If passed into law with many of the proposed changes in place, it would mark the first major reform of Canada’s trademarks legislation since 1954. While there is a chance the Bill may not be passed before the current session of Parliament ends, it is likely to be revived in the next session, later in 2013.

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