Bill C-56 Tacks on significant amendments to Trade-Marks Act

Justine Whitehead -

On March 1, 2013, Bill C-56 was introduced in the House of Commons. As might be expected from the short title of the proposed act (Combatting Counterfeit Products Act), the majority of Bill C-56 is directed to amendments to the Copyright Act and the Trade-marks Act to add new civil and criminal remedies to curtail commercial counterfeiting activities. Update: The details of these new provisions are reviewed here.

 While the essence of Bill C-56 is clearly directed to counterfeiting, the legislation also proposes significant amendments to the Trade-marks Act (the TMA) that are unrelated to counterfeiting activities. The most significant of these other changes are highlighted below.

Expansion of What Items May Serve as a Trade-Mark

The proposed amendments would significantly expand the scope of a registrable trade-mark. A “trade-mark” would be defined (inter alia) as “a sign or combination of signs that is used by a person for the purpose of distinguishing or so as to distinguish their goods or services from those of others.” The definition of the term “sign” confirms the expansion of items that can serve as trade-marks, 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.” (As a consequence of this expansion, the express provisions regarding distinguishing guises would be deleted from the TMA.)

The nature of the evidence required to prove registrability is deliberately left vague in the proposed revisions, and a revised s. 32 would allow the Registrar to ask for any evidence that the Registrar needs to establish that a trade-mark is distinctive at the date of the filing of the application for registration. Similarly, the proposed revised s. 37.1 would give the Registrar the express right to refuse a trade-mark application because the trade-mark is not distinctive.

Expungement of a Mark that Would Limit Development of an Art or Industry

The proposed amendments would add a new s. 18.1 to permit an application to be made to the Federal Court for expungement of a registered mark, on the grounds that the “registration is likely to unreasonably limit the development of any art or industry”. It will be interesting to review the debate on this provision to get further details on the “mischief” that this provision is meant to address.

Clarifications Regarding Utilitarian Features

The proposed amendments to s. 12(2) of the TMA include an express prohibition against registration of a trade-mark “if, in relation to the goods or services in association with which it is used or proposed to be used, its features are dictated primarily by a utilitarian function”. Furthermore, s. 20 of the TMA would be amended to make it clear that registration of a trade-mark does not prevent a person from using any utilitarian feature embodied in the trade-mark.

Section 45 (Summary Cancellation) Proceedings

Currently, on request of a third party, a s. 45 notice requires the registrant to provide evidence of use of the subject registered trade-mark in association with all of the goods and services in the registration. The proposed amendments to s. 45(1) would provide the Registrar with the option to give notice to the registrant that it must provide evidence of use of the mark in association with only part of the goods or services specified in the registration.

Opposition Proceedings

The proposed amendments would clarify that a counterstatement need only state that the applicant intends to respond to the opposition. The amendments would also appear to require service of written representations at the same time that a party submits such representations to the Registrar in the opposition proceedings (rather than requiring the Registrar to forward such written arguments to the other party).

Associated Marks

The proposed amendments appear to dispense with the ongoing issues related to associated marks. Association is the statutory procedure by which CIPO permits the registration of two or more confusingly similar trade-marks by one owner. It is a precondition of the registration of the marks that they be owned by the same person or entity and remain so thereafter. Associated marks can be assigned or transferred, but must be all be transferred together, at the same time, to the same assignee. CIPO will refuse to record any assignment or other document which, if registered, would have the effect of placing associated marks in the hand of separate owners.
Section 15 of the TMA would be amended to state that “… confusing marks are deemed to be registrable if the applicant is the owner of all of the confusing trade-marks”. The proposed deletion of the Registrar’s obligation to note associated marks, and to ensure that subsequent changes in ownership or owner’s name are made to every mark in a group of associated marks suggests that the Registrar will no longer prohibit such changes.

Changes to the Application Process

Bill C-56 would amend the TMA to allow for a number of changes in the application process, including:

  • The ability to divide applications (and further sub-divide divisional applications), and then re-merge such divisionals after registration. Each divisional application would be deemed to have the filing date of the original application, and the Registrar would have the power to set regulations to determine the date of registration and renewal for re-merged applications;
     
  • The right to file an application for a proposed certification mark, rather than waiting until after such a mark has been in use;
     
  • A requirement for applicants seeking to register word marks (or any combination of letters, numerals, punctuation marks, diacritics or typographical symbols), and who do not wish to limit their registration to any particular font, size or colour, to include a statement to the effect that they wish the trade-mark to be registered in standard characters; and
     
  • The potential of a one-week extension of time to the six-month priority filing date.

Amendments to Reflect Jurisprudence

A number of the proposed revisions appear to be directed to codifying the scope of Registrar’s powers that have been decided by prior caselaw. For example, decades after s. 7(e) of the TMA was declared ultra vires, one of the proposed amendments would delete s. 7(e) from the TMA. Similarly, the proposed amendments expressly confirm that the Registrar has the right to issue a split decision in an opposition, and the right to refuse an application with respect to one or more of the goods or services specified in it and accept the application with respect to the others.

Section 38 of the TMA would be amended to make it clear that the Registrar does have the power to strike all or part of a Statement of Opposition on the grounds that it is not properly pleaded (or does not set out a ground of opposition in sufficient details to allow an applicant to reply to it). However, the proposed amendments would require that such a motion be made quite soon after receipt of a Statement of Opposition, because the Registrar’s ability to strike all or part of a Statement of Opposition would have to be exercised prior to the filing of an applicant’s counterstatement.

Housekeeping Matters

A number of the proposed amendments to the TMA are directed to better defining the Registrar’s record-keeping obligations. For example, a new s. 29.1 of the TMA would provide the Registrar with the express right to destroy records relating to refused applications, abandoned applications, expunged registrations, inactive official mark registrations, and similar inactive files within 6 years after the date of the final decision that rendered those files inactive. Similarly, section 64 of the TMA is proposed to be amended to provide the Registrar of Trademarks with an express right to keep electronic records.

Section 41 of the TMA is proposed to be amended to provide the Registrar with a new and very helpful right to “correct any error in the entry that is obvious from the documents relating to the registered trade-mark in question that are, at the time of the entry is made, on file in the Registrar’s office”, provided that such correction is made within 6 months after an entry in the Register is made. Similarly, s. 48 of the TMA is proposed to be amended to allow the Registrar to “remove the registration of a transfer of a registered trade-mark on being furnished with evidence satisfactory to him or her that the transfer should not have been registered”.
Currently, the Registrar of Trade-marks takes the position that he or she has no jurisdiction to make such changes, and the only way to correct such errors is by application to Federal Court.
 

Finally, to reflect a more modern parlance, the TMA would be amended throughout to replace the word “wares” with the word “goods”.

Conclusion

Bill C-56 has a significant road to travel before it passes into law, and the final version of the legislation may well change after debate at second reading, and a clause-by-clause review by a committee. We will continue to monitor the progress of this bill, and keep you advised as the bill progresses through the legislative process.

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