Beyond a suggested resurgence of the principles that were last year, C-56 contains many backdoor revisions to the Trade-marks Act that do not pertain to counterfeiting. In addition to an extensive list of remedies (see Adam Stevenson's article ), including the creation of multiple (and stricter) , C-56 would extensively broaden the definition of a trade-mark. The proposed amendment to the definition reads:

“49. If a sign or combination of signs is used by a person as a trade-mark for any of the purposes or in any of the manners mentioned in the definition “certification mark” or “trade-mark” in section 2, no application for the registration of the trade-mark shall be refused and no registration of the trade-mark shall be expunged, amended or held invalid merely on the ground that the person or a predecessor in title uses the �ٰ������-����������or has used it for any other of those purposes or in any other of those manners.” [underlined text indicating proposed amendments]

One key addition here would be the “combination of signs”, which would vastly expand the scope of what can comprise a trade-mark beyond the traditional forms. As of the first reading of the bill, signs would now 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.” These changes would mean that you could register trade-marks for purely intangible sensory phenomena such as scents, tastes, and sounds (which has been ). Also, in a semantic modernization, the entire Trade-marks Act would be amended to replace “wares” with “goods”, to reflect common modern language.

The bill also suggests clarity of the registration of marks related to utilitarian features. Specifically, it would amend s. 12(2) to prohibit the registration of trade-marks where “its features are dictated primarily by a utilitarian function”. Moreover, s. 20 would provide clarity that trade-marks can not be used to prevent others from using utilitarian features affiliated with the trade-mark. Another change associated with promoting public use and progressiveness is the proposed s. 18.1 which would allow application to the Federal Court to expunge a registered trade-mark that “unreasonably limits the development of any art or industry”. This would bring the trade-mark system in Canada more in line with the underlying principles of the as a matter of public interest. These suggested provisions would represent a shift more toward “user rights”, which was also seen with the expansion of fair dealing provisions in the Copyright Act last year with .

A number of the proposed amendments to the Trade-marks Act pertain to the power of the Registrar, reflecting recent caselaw. The Registrar would have the right to refuse an application with respect to one or more of the goods or services specified and accept it with respect to others. He would also have the power to strike any part of an improperly pleaded Statement of Opposition, so long as it was done prior to the filing of the applicant’s  counterstatement (s. 38). The application process would be substantially changed, including the power being assigned to the Registrar to set regulations to establish the dates of registration for divisional applications to be re-merged (another new aspect of the Act; s. 39.1). Further clarity into the role of the Registrar includes the right to destroy records related to stale applications and registrations, within 6 years of the date of the final decision (s. 29.1) and a right to keep electronic records (s. 64). Finally, while the Registrar typically exercises no jurisdiction over correcting obvious errors in the records (it is presently subject to application to the Federal Court), ss. 41 and 48 would allow the Registrar to correct obvious errors within 6 months of entry and to remove registration of improper transfers, respectively.

Undoubtedly, the proposed amendments to the Trade-marks Act represent a modernization of the Act similar to that imposed by C-11 on the Copyright Act. However, a problem lies in the intention of the bill, which is purported to target counterfeiting. In my opinion, this bill mirrors the type of ‘omnibus’ legislation that drastically and broadly reformed the , in the form of the wildly controversial . While some of the reforms suggested here will be welcomed to update archaic or out-of-date aspects of the legislation, the overall package of Bill C-56 is bound to be controversial. The , but I think that is unlikely the Conservative majority will waver. One thing is certain: the drama will be intriguing.

Ryan Heighton is a JD candidate at Osgoode Hall Law School.

The post The Living Daylights (…Scents, Tastes, and Sounds): Bill C-56 Forebodes Drastic Trade-mark Reform appeared first on IPOsgoode.

Christian Paradis, Minister of Industry, also noted that the legislation is well in keeping with public concerns about family safety and the safety of the community at large. But the extent to which this legislation’s remedies truly protect the public is somewhat misstated.

One of the biggest changes to help combat counterfeit products are sections of the bill which relate to the seizure of imported or exported items that are potentially infringing on copyright or trade-mark rights.  (See to read more about some of the proposed revisions to the Copyright Act and Trade-marks Act contained within the bill).  A customs officer may now detain items (for a set period of time) which they believe infringe on these rights. In addition, the rights holders themselves can apply for assistance from customs to enforce their rights in relation to items which they believe infringe upon their intellectual property rights. Rights holders will also have access to information from officers relating to any detained or suspect items. During the time of detention, neither the officer nor the government will be liable for any damages done to the detained items.

Additional criminal sections have also been proposed for the Trade-marks Act. The new provisions would capture anyone involved in an infringing scheme that had knowledge of the infringement. Punishment for intentional infringement is up to $ 1,000,000 in fines, up to 5 years in prison, or both. This section clearly increases the courts ability to punish infringers from the broad and understated relief provisions in section of the current Trade-marks Act.

see this legislation as an attempt by the Canadian government to further comply with the Anti-Counterfeiting Trade Agreement (ACTA). ACTA had recently taken a great deal of public opposition in the resulting in a lack of support for the act by EU government officials.

It is important, however, to take account of why the EU opposed ACTA in the first place. Opposition to ACTA, at least from the EU public’s perspective, seems to have been based primarily on ACTA’s privacy and fair-dealing provisions. Therefore, it is doubtful, in my mind, that even if the Canadian public was more aware of the effects of bill C-56, there would be widespread opposition. The new bill clearly increases the protections that copyright or trade-mark owners enjoy, but not in a way that directly concerns the general public. On an individual level, I doubt whether the average Canadian would ever notice that these new protections exist. The protections target commercial behaviour, specifically the importation or exportation of goods, and therefore it may only affect Canadians on a business level.

That said, there are clear concerns, on a commercial level, with the bill as it has been proposed. The most obvious of which is that customs officers are now put in a position to make legal judgments as to whether imported goods violate IP rights or not. The rights holders themselves will be in a position to direct the attentions of customs officers to further their own goals. In my most cynical imagination, I envision rival businesses reporting copyright/trade-mark infringement to customs officials in relation each other’s imported goods rather than going to court. Without the need for any court direction, the customs officer is now put in a position to detain the impugned goods, potentially interrupting business for a period of time. The possibility of abuse of these new remedy provisions is clear.

Aside from the issues with implementing these new provisions, I also have concerns over the way that this bill was marketed. When the Minister of Public Safety, Mr. Toews makes statements like :

"Counterfeiting poses health and safety risks to Canadians. Goods made using inferior or dangerous materials may lead to injury and even death. Proceeds from the sale of counterfeit goods may be used to support organized crime groups,"

It makes it seem as though this bill is targeting public safety. While I have no doubt that some infringement is the result of counterfeit products which are of an inferior and perhaps dangerous quality, infringement might also be purely accidental. Just because products or services happen to infringe copyright or trade-mark rights that does not necessarily make them a public danger. What this act clearly does is allow greater protection for right’s holders through increased enforcement mechanisms. Therefore, in my opinion, this act has primarily business purposes. Any increase in public safety is, at best, a secondary concern. I think that portraying the bill as addressing public safety unnecessarily clouds the bill’s true purpose and damages it credibility.

Adam Stevenson is a JD Candidate of Western University, Faculty of Law.

The post Bill C-56 Remedies: Rights Holders Can All Feel a Little Safer appeared first on IPOsgoode.