The federal government has introduced a Bill to make it more difficult to export, import and sell counterfeit goods, and to expand on what may be registered as a trademark and simplify the registration process. The proposed Combating Counterfeit Products Act (Bill C-56) would amend the Copyright Act, the Trade-marks Act, the Criminal Code of Canada and other Acts.
Specifically, the Bill would make it a criminal offence to possess “for sale, rental, distribution for the purpose of trade or exhibition in public by way of trade, an infringing copy of a work or other subject-matter in which copyright subsists,” and to export or attempt to export such works for commercial purposes. (Importing counterfeit goods is already covered by the Copyright Act.)
The Bill would give Canada Border Services Agency (CBSA) officers the authority to detain commercial shipments suspected to contain counterfeit goods and contact the rights holders. It would allow Canadian businesses to ask the CBSA for assistance when they suspect a shipment contains counterfeit goods, enabling border officers to share information with rights holders.
Officers would also have the power to seize and destroy counterfeit goods, but the trademark owner would have to pay for the storage and destruction of the goods. Officers would not inspect goods travelling through Canada but destined for elsewhere.
The new criminal offences for the commercial possession, manufacture or trafficking of counterfeit goods, and the counterfeiting of trademarks themselves, would come with penalties of up to $1,000,000, five years of jail time or both. Legitimate trademark owners would also get new tools to protect their rights and take civil action against infringers.
The amendments to trademark law would not all have to do with piracy or counterfeit goods. The Bill would amend the definition of trademark 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.” The amendments would make it explicit that trademarks be distinctive and not simply “utilitarian.”
The Bill would also give trademark owners and prospective owners tools to challenge, modify and divide applications, and in theory make the trademark registration process easier to manage.
The Bill has only passed first reading and will likely undergo changes as it makes its way through second reading and committees. We’ll be keeping an eye on it, and be sure to let our readers know of new developments.
Adam Gorley
First Reference Editor
