Federal Government has recently tabled Bill C-8 entitled An Act to amend the Copyright Act and the
Trade-marks Act and to make consequential amendments to other Acts. This Bill
is a re-tabling of Bill C-56 which was brought forward in the previous sitting
C-8, if passed, will make important changes to both copyright and trade-mark
law in Canada.
bill proposes several changes to Canadian trade-mark law. These include
removing the definition of “wares” in the Trade-marks
Act as well as changing the definitions of “certification mark”,
“distinctive”, “proposed trade-mark” and “trade-mark”. The most significant
change in nomenclature is replacing the word “wares” with the word “goods”.
Additionally the definition of trade-mark has been modified to include “a sign
or combination of signs” while the definition of “sign” has been added to
include a sound, a scent, a taste, a texture and the positioning of a sign.
section 19.1 of the bill tackles importing counterfeit goods for distribution in Canada.
The bill includes an absolute prohibition on manufacturing, enabling
manufacturing, possessing, importing or exporting (or attempting to do so) of
counterfeit goods. The same prohibition applies to legitimate goods where their
import/export/sale is being done without proper licensing.
section 32 of the bill specifically contemplates scents, sounds, tastes and
textures as marks as well as what evidence may be required to establish
distinctiveness of these unique marks.
36 of the proposed bill adds a new section for Divisional Applications that
allows proposed use and prior use portions of trade-mark applications to be
divided on the basis of whether the mark has been used in association with the
goods or services. The divided application is considered a separate application
including with respect to fees however the filing date is deemed to be the
original application’s filing date.
bill also provides for criminal sanctions for counterfeiting of registered
marks. Conviction under s. 51.01 of the proposed bill will be liable for a fine
of up to $1,000,000 or five years in prison or both if the crown proceeds by
way of indictment.
C-8 represents an important step forward with respect to combating trade-mark
counterfeiting in Canada. The prohibitions include enabling manufacturing of
counterfeit goods as well as importing, possessing and exporting.
government has also proposed changing the nomenclature currently found within
Canadian trade-mark law to be more consistent with international trademark law
by replacing the term “wares” with “goods”. As well the definition of
trade-mark itself has been modified to be “a sign or combination of signs” and
specifically includes scents, sounds,
tastes and textures as legally recognized trade-marks. This is confirmed by
proposed section 32 which contemplates that the Registrar may require unique
evidence for establishing that a mark of those types is capable of registration.
will be interesting to see how the courts interpret various scent, taste and
texture marks. While it is presumed that visual senses are fairly easy to
differentiate taste, scent and texture can be more subjective. How marks of
this type will protected or described is another major issue. Will the mark
holder be required to keep a fresh sample of their taste at CIPO at all times
for comparative purposes? Will a sealed vial of the scent need to be kept at
CIPO? Or will a written description of the scent or smell be sufficient?
the ability to divide proposed and prior use portions of an application will be
advantageous to the owners of such applications. This change will allow the
portion of an application for which the mark has been used in Canada/abroad to
register before use commences in Canada with the goods/services claimed in the
application on a proposed use basis. The ability to “divide out” the
goods/services claimed on a proposed use basis will allow brand owners to
obtain a Canadian trade-mark registration faster for the goods/services in the
application which claim use, while maintaining the rest of the application
claiming goods/services on a proposed use basis.