On December 9, 2014, Bill C-8, or the Combating Counterfeit Products Act, received Royal Assent. The Act is partially in force after Royal Assent, with some sections still requiring proclamation. The amendments are said to broaden the enforcement measures available to protect copyright and trade-mark rights and to curtail commercial activity in counterfeit goods. The Act places special emphasis on cross-border trade, particularly with respect to the criminal provisions in the Copyright Act. Bill C-8 is also said to expand the scope of what can be registered as a trade-mark and modernizes the trade-mark application and opposition process. [Summary] Several definitional changes are also made to key terms in the Trade-marks Act.

Amendments to the Copyright Act

Specific amendments to the Copyright Act include amendments to the provisions against secondary infringement in Section 27, the expansion of the behaviour captured by the criminal remedy in Section 42, and the rewriting of sections 44 to 44.1 that deal with importation and exportation.

Amendments to the Trade-marks Act

Specific amendments to the Trade-marks Act include several definitional changes to key terms:

• The definitions of “package” and “distinguishing guise” are repealed.

• The definition of “wares” is repealed. The term “wares” is replaced throughout the act, most particularly in the definition of “distinctive”, where “wares or services” is changed to “goods or services”.

• In the definitions of “certification mark”, “trade-mark”, and “proposed trade-mark”, the term “mark” is replaced with “sign or combination of signs”.

• A definition for “signs” is added under Section 2:

“sign” includes 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;

• In the definitions for “trade-mark” and “proposed trade-mark”, the language of “…manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others” is removed.

Other key changes to the Trade-marks Act include:

• Section 7(e) pertaining to honest business practices is repealed.

• Section 13 pertaining to distinguishing guises and the definition of “distinguishing guise” are repealed.

• Section 12(2) is a new prohibition against registering a trade-mark which has features that are “dictated primarily by a utilitarian function”.

• Section 20 pertaining to infringement is substantially reworded. Most particularly, Section 20(1.2) provides a defence for using any utilitarian feature embodied in a trade-mark.

The Bill is partially in force, with several provisions still requiring an order of the Governor in Council to come into force:

63. (1) Subject to subsections (2) and (3), the provisions of this Act — other than sections 1, 3 and 4, subsections 7(1) and (4), sections 10, 11 and 14, subsection 15(2), sections 19, 21, 25 and 26, subsection 37(2) and sections 42, 45, 46, 53, 54, 56, 59, 61 and 62 — come into force on a day or days to be fixed by order of the Governor in Council.

(2) Sections 2, 5 and 6, subsection 7(6) and sections 43, 44 and 60 come into force on a day to be fixed by order of the Governor in Council.

(3) Sections 52 and 58 come into force on a day to be fixed by order of the Governor in Council.

Find the full version of Bill C-8 here.