Canada: Proposed Changes To The Trademark Law

On March 1, 2013, a bill was introduced in the Canadian Parliament entitled Combating Counterfeit Products Act (“Bill C-56”). Bill C-56 is primarily intended to add civil and criminal penalties for commercial counterfeiting to make Canada compliant with the Anti-Counterfeit Trade Agreement (“ACTA”), a multinational treaty designed to establish standards for intellectual property enforcement. Canada has executed, but not yet ratified ACTA.

Bill C-56 includes a number of substantive and procedural amendments to the trademark law in Canada. These include, but are not limited to the following:

• The definition of a trademark is changed to a “sign or combination of signs” including “a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture, and the positioning of a sign.” The purpose of the change is to provide for possible registration and protection of non-traditional trademarks such as holograms, sounds, scents and moving images,

• Removing the requirement of associated marks (similar marks will be able co-exist on the register without being associated),

• Recognition of certification marks,

• Permitting the partial, as opposed to full cancellation of a registration. This means that some, but not all the goods can be canceled from a registration, and

• Permitting the Registrar to correct certain clerical errors on the Register. Under the current law this can only be accomplished through intervention by the Federal Court.

Bill C-56 is in the early stages of the legislative process and may not be passed into law. It will also likely undergo significant amendments and changes as it moves through the legislative process. We will continue to monitor its progress.


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