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Bill introduced by Canadian government to address counterfeiting and amend the Trade-marks Act and the Copyright Act

March 1, 2013

On March 1, 2013, the Canadian government introduced Bill C-56, the Combating Counterfeit Products Act. According to the government’s press release, Bill 56 is designed to protect Canadian consumers, manufacturers and retailers, as well as the Canadian economy, from threats posed by counterfeit goods. The bill identifies specific offences related to the selling and distributing of unauthorized goods or services, and related labels and packages. Offenses are punishable with fines of up to $1,000,000 or imprisonment for up to five years (or both), and should equip brand owners and the Canada Border Services Agency with more power to prevent sale and importation of counterfeit goods.

The government has also taken the opportunity to make some major house-keeping revisions, and has introduced significant changes to trademark protection in Canada such as:

  • a new “sign” concept, added to the definition of “trademark”, providing for new types of marks such as colour, smell, taste, and texture , and confirming the registrability of other types of marks which have been recently been recognized such as sounds and holograms;
  • several known statutory terms are being replaced, such as “wares”, “distinguishing guise”, and “associated marks”;
  • addition of a “non-utilitarian function” criteria for  trademarks to be registrable;
  • permitting applications for “certification marks” based on proposed use;
  • changes to the opposition regime, including simplification of counter-statements; 
  • introduction of “divisional applications”, with the possibility to merge the resulting registrations; and
  • express authorization for the Registrar of Trade-marks to correct obvious errors in issued registrations during a six-month window after issuance.

For more details, or any questions relating to this Bill, please contact François Larose.

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Author(s):

François Larose François Larose
B.A.A., LL.L., LL.M.
Partner
514.871.2109  email François Larose