Canada proposes new trade mark legislation

Bill C-56 had its first reading in the House of Commons on Friday. Among the most significant changes it proposes is a new definition of a trade mark that would recognise non-traditional marks, including colour, smell, taste and texture marks, as well as confirm the registrability of sound and hologram marks, according to Smart & Biggar/Fetherstonhaugh.

Specifically, the legislation defines the word trade mark 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". It is this introduction of a so-called sign concept that would allow for the registration of non-traditional marks.

The present language of the Trade-Marks Act defines a trade mark as "a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others".

"The totality of changes is clearly meant to create flexibility and allow for the registration of all types of non-traditional marks but only if they are, in fact, distinctive," wrote Kelly Gill of Gowlings.

The bill would also improve border measures by granting Customs officials authority to seize and detain goods and establishing criminal provisions for infringement, with fines of up to $1 million, imprisonment up to five years, or both.

Additionally, the bill would allow for filing of certification marks based on proposed use, rather than having to wait until the mark is already in use, as applicants do now.

Divisional trade mark applications would also be permitted, allowing applicants to register for goods and services already in use without having to abandon the application for the remaining goods and services.

The bill is expected to move quickly to a second reading and then be referred to a committee where witnesses may be called to comment and amendments will be considered.

"Since the Bill was introduced by the Government, which has a majority in both Parliament and the Senate, it is expected that the Bill will pass during the current session of Parliament," said Smart & Biggar's release.

The Bill must then undergo a similar process in the Senate before receiving Royal Assent and implementation.