Changes coming to Trademark Law: CETA and Bill C-8

There have been important developments in Canadian trademark law in recent days following the release by the Canadian government of additional details concerning the Canada-EU Comprehensive Economic and Trade Agreement (CETA) and the tabling of a new Combating Counterfeit Products Act.

While the precise terms of CETA have not been made public, on October 29 2013 the Canadian government released a technical summary of the tentative agreement, including details of provisions dealing with intellectual property.

The trademark profession had speculated that CETA might require Canada to accede to the Madrid Protocol. However, in light of the information released on October 29, this does not appear to be on the horizon for some time. In fact, Canada will not be required under CETA to take on any specific commitments in this area, but instead will make a “best endeavours” commitment to make “all reasonable efforts” to comply with international agreements and standards (including the Singapore Treaty on the Law of Trademarks and the Madrid Protocol) to “encourage more effective trademark procedures”.  

However, under CETA, Canada will provide protection for EU geographical indications (GIs) for various foods and beer, in addition to the EU wines and spirits GIs currently recognised by Canada. The nature and scope of protection will vary depending upon the specific GI in question. Overall, under CETA enforcement of GIs in the Canadian market is expected to remain a private matter to be determined by the courts. Commitments as to border enforcement of GIs are to be confirmed at a later date.

CETA also includes commitment aimed at combating trade in counterfeit goods. CETA will include provisions on civil remedies and border enforcement in line with Canada’s existing regime, and in keeping with the proposals found in the pending Bill C-8, the Combating Counterfeit Products Act.

Bill C-8 was introduced on October 28 and proposes important changes to trademark and copyright law, and is identical to Bill C-56 introduced in the previous session of Parliament.   

Bill C-8 proposes new civil and criminal remedies, as well as new border measures in order to strengthen the enforcement of copyright and trademark rights, and to curtail commercial activity involving infringing copies and counterfeit goods. In particular, both the Trademarks Act and Copyright Act will be amended to permit border officials to detain goods suspected of infringing any trademark or copyright, and provide for related enforcement proceedings and remedies.

In a similar vein, Bill C-8 will add criminal offences and remedies to the Trademarks Act directed at counterfeits similar to those that already exist in the Copyright Act. In this regard, offences are proposed regarding the manufacturing, sale, possession, importation and distribution of counterfeit goods, labels and packaging, with fines of up to C$1,000,000 or imprisonment for up to five years.  

In addition, building upon the decision of the Canadian Trademarks Office to permit the registration of sound marks in 2012, Bill C-8 proposes amendments to the Trademarks Act to allow for the registration of several types of non-traditional marks.

To accomplish this goal, Bill C-8 would eliminate the undefined term 'mark' from the Trademarks Act and replace it with the term 'sign', which is defined to include 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. However, where such non-traditional marks are applied for, the Trademarks Office may require an applicant to provide evidence of distinctiveness in order to obtain registration. Currently, the office does not review an application for distinctiveness in examination, although an application can be opposed on this basis.

The proposed changes also include allowing applicants to apply for certification marks on a proposed use basis. Unlike trademarks, which can be applied for on a proposed use basis, certification marks can currently only be applied for if in use. Divisional applications will at last also be permitted, giving proposed use applicants the flexibility of registering their mark for the goods and services for which there has been use, without having to abandon the application with respect to any of the other goods and services claimed in the original application. Similarly, divisional applications will allow for the registration of a trademark for non-contentious goods and services without delay where an objection is raised in examination against certain goods or services listed in the application.

Bill C-8 has now been referred to a parliamentary committee, where it will receive further study and may be further amended before becoming law in Canada. Similarly, the proposals set out in CETA are expected to receive additional 'fine tuning' before the precise terms of the agreement are released, and full ratification of CETA is not expected to occur for some months.

Monique Couture and James Green, Gowling Lafleur Henderson LLP, Ottawa