Bill C-8: An Act to amend the Copyright Act and the Trade-marks Act and to make consequential amendments to other Acts

Second Session, Forty-first Parliament, 62-63 Elizabeth II, 2013-2014 STATUTES OF CANADA 2014CHAPTER 32 An Act to amend the Copyright Act and the Trade-marks Act and to make consequential amendments to other Acts ASSENTED TO 9th DECEMBER, 2014 BILL C-8 SUMMARY This enactment amends the Copyright Act and the Trade-marks Act to add new civil and criminal remedies and new border measures in both Acts, in order to strengthen the enforcement of copyright and trade-mark rights and to curtail commercial activity involving infringing copies and counterfeit trade-marked goods. More specifically, the enactment (a) creates new civil causes of action with respect to activities that sustain commercial activity in infringing copies and counterfeit trade-marked goods; (b) creates new criminal offences for trade-mark counterfeiting that are analogous to existing offences in the Copyright Act; (c) creates new criminal offences prohibiting the possession or export of infringing copies or counterfeit trade-marked goods, packaging or labels; (d) enacts new border enforcement measures enabling customs officers to detain goods that they suspect infringe copyright or trade-mark rights and allowing them to share information relating to the detained goods with rights owners who have filed a request for assistance, in order to give the rights owners a reasonable opportunity to pursue a remedy in court; (e) exempts the importation and exportation of copies and goods by an individual for their personal use from the application of the border measures; and (f) adds the offences set out in the Copyright Act and the Trade-marks Act to the list of offences set out in the Criminal Code for the investigation of which police may seek judicial authorization to use a wiretap. The enactment also amends the Trade-marks Act to, among other things, expand the scope of what can be registered as a trade-mark, allow the Registrar of Trade-marks to correct errors that appear in the trade-mark register, and streamline and modernize the trade-mark application and opposition process. Available on the Parliament of Canada Web Site at the following address:http://www.parl.gc.ca 62-63 ELIZABETH II —————— CHAPTER 32 An Act to amend the Copyright Act and the Trade-marks Act and to make consequential amendments to other Acts [Assented to 9th December, 2014] Her Majesty, by and with the advice and consent of the Senate and House of Commons of Canada, enacts as follows: SHORT TITLE Short title 1. This Act may be cited as the Combating Counterfeit Products Act. R.S., c. C-42 COPYRIGHT ACT 2. The definition “Minister” in section 2 of the Copyright Act is replaced by the following: “Minister”« ministre » “Minister”, except in sections 44 to 44.12, means the Minister of Industry; 3. Section 27 of the Act is amended by adding the following after subsection (2.1): Secondary infringement — exportation (2.11) It is an infringement of copyright for any person, for the purpose of doing anything referred to in paragraphs (2)(a) to (c), to export or attempt to export a copy — of a work, sound recording or fixation of a performer’s perform- ance or of a communication signal — that the person knows or should have known was made without the consent of the owner of the copyright in the country where the copy was made. Exception (2.12) Subsection (2.11) does not apply with respect to a copy that was made under a limitation or exception under this Act or, if it was made outside Canada, that would have been made under such a limitation or exception had it been made in Canada. 4. (1) The portion of subsection 42(1) of the English version of the Act before paragraph (a) is replaced by the following: Offences 42. (1) Every person commits an offence who knowingly (2) Subsection 42(1) of the Act is amended by striking out “or” at the end of paragraph (d) and by replacing the portion of the subsection after paragraph (d) with the following: (e) possesses, 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; (f) imports, for sale or rental, into Canada any infringing copy of a work or other subject-matter in which copyright subsists; or (g) exports or attempts to export, for sale or rental, an infringing copy of a work or other subject-matter in which copyright subsists. (3) The portion of subsection 42(2) of the English version of the Act before paragraph (a) is replaced by the following: Possession and performance offences (2) Every person commits an offence who knowingly (4) The portion of subsection 42(2) of the Act after paragraph (b) is repealed. (5) Section 42 of the Act is amended by adding the following after subsection (2): Punishment (2.1) Every person who commits an offence under subsection (1) or (2) is liable (a) on conviction on indictment, to a fine of not more than $1,000,000 or to imprisonment for a term of not more than five years or to both; or (b) on summary conviction, to a fine of not more than $25,000 or to imprisonment for a term of not more than six months or to both. (6) Section 42 of the Act is amended by adding the following after subsection (3): Notice (3.01) Before making an order under subsection (3), the court shall require that notice be given to the owner of the copies or plates and to any other person who, in the court’s opinion, appears to have a right or interest in them, unless the court is of the opinion that the interests of justice do not require that the notice be given. (7) Subsection 42(5) of the Act is replaced by the following: Parallel importation (5) For the purposes of this section, a copy of a work or other subject-matter is not infringing if the copy was made with the consent of the owner of the copyright in the country where the copy was made. 5. The heading before section 44 and sections 44 and 44.1 of the Act are replaced by the following: Importation and Exportation Interpretation Definitions 44. The following definitions apply in sections 44.02 to 44.4. “court”« tribunal » “court” means the Federal Court or the superior court of a province. “customs officer”« agent des douanes » “customs officer” has the meaning assigned by the definition “officer” in subsection 2(1) of the Customs Act. “duties”« droits » “duties” has the same meaning as in subsection 2(1) of the Customs Act. “Minister”« ministre » “Minister” means the Minister of Public Safety and Emergency Preparedness. “release”« dédouane­ment » “release” has the same meaning as in subsection 2(1) of the Customs Act. “working day”« jour ouvrable » “working day” means a day other than a Saturday or a holiday. Prohibition and Detention by Customs Officer Prohibition Prohibition on importation or exportation 44.01 (1) Copies of a work or other subject-matter in which copyright subsists shall not be imported or exported if (a) they were made without the consent of the owner of the copyright in the country where they were made; and (b) they infringe copyright or, if they were not made in Canada, they would infringe copyright had they been made in Canada by the person who made them. Exception (2) Subsection (1) does not apply to (a) copies that are imported or exported by an individual in their possession or baggage if the circumstances, including the number of copies, indicate that the copies are intended only for their personal use; or (b) copies that, while being shipped from one place outside Canada to another, are in customs transit control or customs transhipment control in Canada. Request for Assistance Request for assistance 44.02 (1) The owner of copyright in a work or other subject-matter may file with the Minister, in the form and manner specified by the Minister, a request for assistance in pursuing remedies under this Act with respect to copies imported or exported in contravention of section 44.01. Information in request (2) The request for assistance shall include the copyright owner’s name and address in Canada and any other information that is required by the Minister, including information about the work or other subject-matter in question. Validity period (3) A request for assistance is valid for a period of two years beginning on the day on which it is accepted by the Minister. The Minister may, at the request of the copyright owner, extend the period for two years, and may do so more than once. Security (4) The Minister may, as a condition of accepting a request for assistance or of extending a request’s period of validity, require that the copyright owner furnish security, in an amount and form fixed by the Minister, for the payment of an amount for which the copyright owner becomes liable under section 44.07. Update (5) The copyright owner shall inform the Minister in writing, as soon as practicable, of any changes to (a) the subsistence of the copyright that is the subject of the request for assistance; or (b) the ownership of that copyright. Measures Relating to Detained Copies Provision of information by customs officer 44.03 A customs officer who is detaining copies of a work or other subject-matter under section 101 of the Customs Act may, in the officer’s discretion, to obtain information about whether the importation or exportation of the copies is prohibited under section 44.01, provide the owner of copyright in that work or subject-matter with a sample of the copies and with any information about the copies that the customs officer reasonably believes does not directly or indirectly identify any person. Provision of information to pursue remedy 44.04 (1) A customs officer who is detaining copies of a work or other subject-matter under section 101 of the Customs Act and who has reasonable grounds to suspect that the importation or exportation of the copies is prohibited under section 44.01 may, in the officer’s discretion, if the Minister has accepted a request for assistance with respect to the work or subject-matter filed by the owner of copyright in it, provide that owner with a sample of the copies and with information about the copies that could assist them in pursuing a remedy under this Act, such as (a) a description of the copies and of their characteristics; (b) the name and address of their owner, importer, exporter and consignee and of the person who made them; (c) their quantity; (d) the countries in which they were made and through which they passed in transit; and (e) the day on which they were imported, if applicable. Detention (2) Subject to subsection (3), the customs officer shall not detain, for the purpose of enforcing section 44.01, the copies for more than 10 working days — or, if the copies are perishable, for more than five days — after the day on which the customs officer first sends or makes available a sample or information to the copyright owner under subsection (1). At the request of the copyright owner made while the copies are detained for the purpose of enforcing section 44.01, the customs officer may, having regard to the circumstances, detain non-perishable copies for one additional period of not more than 10 working days. Notice of proceedings (3) If, before the copies are no longer detained for the purpose of enforcing section 44.01, the owner of copyright has provided the Minister, in the manner specified by the Minister, with a copy of a document filed with a court commencing proceedings to obtain a remedy under this Act with respect to the detained copies, the customs officer shall continue to detain them until the Minister is informed in writing that (a) the proceedings are finally disposed of, settled or abandoned; (b) a court directs that the copies are no longer to be detained for the purpose of the proceedings; or (c) the copyright owner consents to the copies no longer being so detained. Continued detention (4) The occurrence of any of the events referred to in paragraphs (3)(a) to (c) does not preclude a customs officer from continuing to detain the copies under the Customs Act for a purpose other than the proceedings. Restriction on information use — section 44.03 44.05 (1) A person who receives a sample or information that is provided under section 44.03 shall not use the information, or information that is derived from the sample, for any purpose other than to give information to the customs officer about whether the importation or exportation of the copies is prohibited under section 44.01. Restriction on information use — subsection 44.04(1) (2) A person who receives a sample or information that is provided under subsection 44.04(1) shall not use the information, or information that is derived from the sample, for any purpose other than to pursue remedies under this Act. For greater certainty (3) For greater certainty, subsection (2) does not prevent the confidential communication of information about the copies for the purpose of reaching an out-of-court settlement. Inspection 44.06 After a sample or information has been provided under subsection 44.04(1), a customs officer may, in the officer’s discretion, give the owner, importer, exporter and consignee of the detained copies and the owner of copyright an opportunity to inspect the copies. Liability for charges 44.07 (1) The owner of copyright who has received a sample or information under subsection 44.04(1) is liable to Her Majesty in right of Canada for the storage and handling charges for the detained copies — and, if applicable, for the charges for destroying them — for the period beginning on the day after the day on which a customs officer first sends or makes available a sample or information to that owner under that subsection and ending on the first day on which one of the following occurs: (a) the copies are no longer detained for the purpose of enforcing section 44.01 or, if subsection 44.04(3) applies, for the purpose of the proceedings referred to in that subsection; (b) the Minister receives written notification in which the owner states that the importation or exportation of the copies does not, with respect to the owner’s copyright, contravene section 44.01; (c) the Minister receives written notification in which the owner states that they will not, while the copies are detained for the purpose of enforcing section 44.01, commence proceedings to obtain a remedy under this Act with respect to them. Exception — paragraph (1)(a) (2) Despite paragraph (1)(a), if the copies are forfeited under subsection 39(1) of the Customs Act and the Minister did not, before the end of the detention of the copies for the purpose of enforcing section 44.01, receive a copy of a document filed with a court commencing proceedings to obtain a remedy under this Act with respect to the detained copies or the written notification referred to in paragraph (1)(b) or (c), the period ends on the day on which the copies are forfeited. Exception — paragraph (1)(c) (3) Despite paragraph (1)(c), if the copies are forfeited under subsection 39(1) of the Customs Act after the Minister has received the written notification referred to in that paragraph, the period ends on the day on which the copies are forfeited. Joint and several or solidary liability (4) The owner and the importer or exporter of copies that are forfeited in the circumstances set out in subsection (2) or (3) are jointly and severally, or solidarily, liable to the owner of copyright for all the charges under subsection (1) paid by the copyright owner with respect to the period (a) in the circumstances referred to in subsection (2), beginning on the day on which the copies are no longer detained for the purpose of enforcing section 44.01 and ending on the day on which the copies are forfeited; and (b) in the circumstances referred to in subsection (3), beginning on the day on which the Minister receives the written notification referred to in paragraph (1)(c) and ending on the day on which the copies are forfeited. Exception (5) Subsections (1) to (3) do not apply if (a) the detention of the copies for the purpose of enforcing section 44.01 ends before the expiry of 10 working days — or, if the copies are perishable, before the expiry of five days — after the day on which the customs officer first sends or makes available a sample or information to the copyright owner under subsection 44.04(1); and (b) the Minister has not, by the end of the detention, received a copy of a document filed with a court commencing proceedings to obtain a remedy under this Act with respect to the detained copies or the written notification referred to in paragraph (1)(b) or (c). No Liability No liability 44.08 Neither Her Majesty nor a customs officer is liable for any loss or damage suffered in relation to the enforcement or application of sections 44.01 to 44.04 and 44.06 because of (a) the detention of copies of a work or other subject-matter, except if the detention contravenes subsection 44.04(2); (b) the failure to detain copies; or (c) the release or cessation of detention of any copies, except if the release or cessation contravenes subsection 44.04(3). Powers of Court Relating to Detained Copies Application to court 44.09 (1) In the course of proceedings referred to in subsection 44.04(3), the court may, on the application of the Minister or a party to the proceedings, (a) impose conditions on the storage or detention of the copies that are the subject of the proceedings; or (b) direct that the copies are no longer to be detained for the purpose of the proceedings, on any conditions that the court may impose, if their owner, importer, exporter or consignee furnishes security in an amount fixed by the court. Minister’s consent (2) If a party applies to have the detained copies stored in a place other than a bonded warehouse or a sufferance warehouse, as those terms are defined in subsection 2(1) of the Customs Act, the Minister must consent to the storage of the copies in that place before a condition to that effect is imposed under subsection (1). Customs Act (3) The court may impose a condition described in subsection (2) despite section 31 of the Customs Act. Continued detention (4) A direction under paragraph (1)(b) that the copies are no longer to be detained for the purpose of the proceedings does not preclude a customs officer from continuing to detain the copies under the Customs Act for another purpose. Security (5) In the course of proceedings referred to in subsection 44.04(3), the court may, on the application of the Minister or a party to the proceedings, require the owner of copyright to furnish security, in an amount fixed by the court, (a) to cover duties, storage and handling charges, and any other amount that may become chargeable against the copies; and (b) to answer any damages that may, because of the detention of the copies, be sustained by the owner, importer, exporter or consignee of the copies. Damages against copyright owner 44.1 (1) The court may award damages against the owner of copyright who commenced proceedings referred to in subsection 44.04(3) to the owner, importer, exporter or consignee of the copies who is a party to the proceedings for losses, costs or prejudice suffered as a result of the detention of the copies if the proceedings are dismissed or discontinued. Damages awarded to copyright owner (2) Any damages under subsection 34(1) awarded to the owner of copyright in proceedings referred to in subsection 44.04(3) are to include the charges incurred by the copyright owner as a result of storing, handling or, if applicable, destroying the detained copies. Prohibition Resulting from Notice Importation of certain copyright works prohibited 44.11 Copies made outside Canada of any work in which copyright subsists that if made in Canada would infringe copyright and as to which the owner of the copyright gives notice in writing to the Canada Border Services Agency that the owner desires that the copies not be imported into Canada, shall not be so imported and are deemed to be included in tariff item No. 9897.00.00 in the List of Tariff Provisions set out in the schedule to the Customs Tariff, with section 136 of that Act applying accordingly. Court-ordered Detention Power of court 44.12 (1) A court may make an order described in subsection (3) if the court is satisfied that (a) copies of the work are about to be imported into Canada, or have been imported into Canada but have not been released; (b) the copies were either (i) made without the consent of the person who is owner of the copyright in the country where they were made, or (ii) made elsewhere than in a country to which this Act extends; and (c) the copies would infringe copyright if they were made in Canada by the importer and the importer knows or should have known this. Who may apply (2) A court may make an order described in subsection (3) on application by the owner of the copyright in a work in Canada. Order of court (3) In an order made under subsection (1), the court may (a) direct the Minister (i) to take reasonable measures, on the basis of information reasonably required by the Minister and provided by the applicant, to detain the copies of the work, and (ii) to notify the applicant and the importer, immediately after detaining the copies of the work, of the detention and the reasons for the detention; and (b) provide for any other matters that the court considers appropriate. How application made (4) An application for an order under subsection (1) may be made in an action or otherwise, and either on notice or ex parte, except that it must always be made on notice to the Minister. Security (5) Before making an order under subsection (1), the court may require the applicant to furnish security, in an amount fixed by the court, (a) to cover duties, storage and handling charges and any other amount that may become chargeable against the copies of the work; and (b) to answer any damages that may by reason of the order be incurred by the owner, importer or consignee of the work. Application for directions (6) The Minister may apply to the court for directions in implementing an order made under subsection (1). Minister may allow inspection (7) The Minister may give the applicant or the importer an opportunity to inspect the detained copies of the work for the purpose of substantiating or refuting, as the case may be, the applicant’s claim. If applicant fails to commence action (8) Unless an order made under subsection (1) provides otherwise, the Minister shall, subject to the Customs Act and to any other Act of Parliament that prohibits, controls or regulates the importation or exportation of goods, release the copies of the work without further notice to the applicant if, within 10 working days after the applicant has been notified under subparagraph (3)(a)(ii), the applicant has not notified the Minister that they have commenced a proceeding for a final determination by the court of the issues referred to in paragraphs (1)(b) and (c). If court finds in plaintiff’s favour (9) If, in a proceeding commenced under this section, the court is satisfied that the circumstances referred to in paragraphs (1)(b) and (c) existed, the court may make any order that it considers appropriate in the circumstances, including an order that the copies of the work be destroyed, or that they be delivered up to the plaintiff as the plaintiff’s property absolutely. Other remedies not affected (10) For greater certainty, nothing in this section affects any remedy available under any other provision of this Act or any other Act of Parliament. Replacement of “44.1” 6. The Act is amended by replacing “44.1” with “44.12” in the following provisions: (a) paragraph 34(4)(b); (b) paragraph 41.23(2)(a); (c) the portion of subsection 44.2(1) before paragraph (a), the portion of subsection 44.2(2) before paragraph (a) and subsection 44.2(4); and (d) the portion of section 44.4 before paragraph (a). R.S., c. T-13 TRADE-MARKS ACT 7. (1) The definitions “package” and “wares” in section 2 of the Trade-marks Act are repealed. (2) The definition “distinguishing guise” in section 2 of the Act is repealed. (3) The definitions “certification mark”, “distinctive”, “proposed trade-mark” and “trade-mark” in section 2 of the Act are replaced by the following: “certification mark”« marque de certification » “certification mark” means (a) a sign or combination of signs that is used for the purpose of distinguishing or so as to distinguish goods or services that are of a defined standard from those that are not of that defined standard, with respect to (i) the character or quality of the goods or services, (ii) the working conditions under which the goods have been produced or the services performed, (iii) the class of persons by whom the goods have been produced or the services performed, or (iv) the area within which the goods have been produced or the services performed, or (b) a proposed certification mark; “distinctive”« distinctive » “distinctive”, in relation to a trade-mark, de-scribes a trade-mark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them; “proposed trade-mark”« marque de commerce projetée » “proposed trade-mark” means a sign or combination of signs that is proposed to be used by a person for the purpose of distinguishing or so as to distinguish their goods or services from those of others; “trade-mark”« marque de commerce » “trade-mark” means (a) 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, (b) a proposed trade-mark, or (c) a certification mark; (4) The definition “marque de certification” in section 2 of the French version of the Act is replaced by the following: « marque de certification »“certification mark” « marque de certification » Marque employée pour distinguer, ou de façon à distinguer, les produits ou services qui sont d’une norme définie par rapport à ceux qui ne le sont pas, en ce qui concerne : a) soit la nature ou la qualité des produits ou services; b) soit les conditions de travail dans lesquelles ont eu lieu leur production ou leur exécution; c) soit la catégorie de personnes qui les a produits ou exécutés; d) soit la région dans laquelle ont eu lieu leur production ou leur exécution. (5) Section 2 of the Act is amended by adding the following in alphabetical order: “proposed certification mark”« marque de certification projetée » “proposed certification mark” means a sign or combination of signs that is proposed to be used for the purpose of distinguishing or so as to distinguish goods or services that are of a defined standard from those that are not of that defined standard, with respect to (a) the character or quality of the goods or services, (b) the working conditions under which the goods have been produced or the services performed, (c) the class of persons by whom the goods have been produced or the services performed, or (d) the area within which the goods have been produced or the services performed; “sign”« signe » “sign” includes 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; (6) Section 2 of the Act is amended by adding the following in alphabetical order: “release”« dédouane­ment » “release” has the same meaning as in subsection 2(1) of the Customs Act; 8. Paragraph 6(5)(e) of the Act is replaced by the following: (e) the degree of resemblance between the trade-marks or trade-names, including in appearance or sound or in the ideas suggested by them. 9. The heading before section 7 of the Act is replaced by the following: UNFAIR COMPETITION AND PROHIBITED SIGNS 10. Section 7 of the Act is amended by adding “or” at the end of paragraph (c), by striking out “or” at the end of paragraph (d) and by repealing paragraph (e). 11. (1) Paragraph 9(1)(d) of the French version of the Act is replaced by the following: d) un mot ou symbole susceptible de porter à croire que les produits ou services en liaison avec lesquels il est employé ont reçu l’approbation royale, vice-royale ou gouvernementale, ou que leur production, leur vente ou leur exécution a lieu sous le patronage ou sur l’autorité royale, vice-royale ou gouvernementale; (2) Paragraph 9(1)(g) of the Act is replaced by the following: (g) the emblem of the Red Crescent on a white ground adopted for the same purpose as specified in paragraph (f); (3) Paragraph 9(1)(i.3) of the Act is replaced by the following: (i.3) any armorial bearing, flag or other emblem, or the name or any abbreviation of the name, of an international intergovernmental organization, if the armorial bearing, flag, emblem, name or abbreviation is on a list communicated under article 6ter of the Convention or pursuant to the obligations under the Agreement on Trade-related Aspects of Intellectual Property Rights set out in Annex 1C to the WTO Agreement stemming from that article, and the Registrar gives public notice of the communication; 12. Section 10 of the Act is replaced by the following: Further prohibitions 10. If any sign or combination of signs has by ordinary and bona fide commercial usage become recognized in Canada as designating the kind, quality, quantity, destination, value, place of origin or date of production of any goods or services, no person shall adopt it as a trade-mark in association with the goods or services or others of the same general class or use it in a way likely to mislead, nor shall any person so adopt or so use any sign or combination of signs so nearly resembling that sign or combination as to be likely to be mistaken for it. 13. Section 11 of the Act is replaced by the following: Further prohibitions 11. No person shall use in connection with a business, as a trade-mark or otherwise, any sign or combination of signs adopted contrary to section 9 or 10. 14. Subsection 11.19(1) of the French version of the Act is replaced by the following: Exception — aucune procédure engagée 11.19 (1) Les articles 11.14 et 11.15 ne s’appliquent pas à l’adoption ou à l’emploi par une personne d’une marque de commerce si aucune procédure n’est engagée pour faire respecter ces dispositions à l’égard de cette adoption ou de cet emploi dans les cinq ans suivant la date à laquelle l’emploi de la marque de commerce par cette personne ou son prédécesseur en titre a été généralement connu au Canada ou la marque de commerce y a été enregistrée par cette personne, sauf s’il est établi que cette personne ou son prédécesseur en titre a adopté ou commencé à employer la marque tout en sachant que l’adoption ou l’emploi étaient contraires à ces articles. 15. (1) The portion of subsection 12(1) of the Act before paragraph (a) is replaced by the following: When trademark registrable 12. (1) Subject to subsection (2), a trade-mark is registrable if it is not (2) Paragraph 12(1)(b) of the French version of the Act is replaced by the following: b) qu’elle soit sous forme graphique, écrite ou sonore, elle donne une description claire ou donne une description fausse et trompeuse, en langue française ou anglaise, de la nature ou de la qualité des produits ou services en liaison avec lesquels elle est employée, ou en liaison avec lesquels on projette de l’employer, ou des conditions de leur production, ou des personnes qui les produisent, ou de leur lieu d’origine; (3) Paragraph 12(1)(e) of the Act is replaced by the following: (e) a sign or combination of signs whose adoption is prohibited by section 9 or 10; (4) Subsection 12(2) of the Act is replaced by the following: Utilitarian function (2) A trade-mark is not registrable 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. Registrable if distinctive (3) A trade-mark that is not registrable by reason of paragraph (1)(a) or (b) is registrable if it is distinctive at the filing date of an application for its registration, having regard to all the circumstances of the case including the length of time during which it has been used. 16. Section 13 of the Act is repealed. 17. Section 15 of the Act is replaced by the following: Registration of confusing trade-marks 15. Despite sections 12 and 14, confusing trade-marks are registrable if the applicant is the owner of all of the confusing trade-marks. 18. The portion of subsection 16(3) of the Act before paragraph (a) is replaced by the following: Proposed certification marks or trade-marks (3) Any applicant who has filed an application in accordance with section 30 for registration of a proposed trade-mark or proposed certification mark that is registrable is entitled, subject to sections 38 and 40, to secure its registration in respect of the goods or services specified in the application, unless at the filing date of the application it was confusing with 19. Subsection 18(1) of the Act is amended by striking out “or” at the end of paragraph (b), by adding “or” at the end of paragraph (c) and by replacing the portion after paragraph (c) with the following: (d) subject to section 17, the applicant for registration was not the person entitled to secure the registration. 20. The Act is amended by adding the following after section 18: Not to limit art or industry 18.1 The registration of a trade-mark may be expunged by the Federal Court on the application of any interested person if the Court decides that the registration is likely to unreasonably limit the development of any art or industry. 21. [Deleted] 1994, c. 47, s. 196 22. Subsection 20(1) of the Act is replaced by the following: Infringement 20. (1) The right of the owner of a registered trade-mark to its exclusive use is deemed to be infringed by any person who is not entitled to its use under this Act and who (a) sells, distributes or advertises any goods or services in association with a confusing trade-mark or trade-name; (b) manufactures, causes to be manufactured, possesses, imports, exports or attempts to export any goods in association with a confusing trade-mark or trade-name, for the purpose of their sale or distribution; (c) sells, offers for sale or distributes any label or packaging, in any form, bearing a trade-mark or trade-name, if (i) the person knows or ought to know that the label or packaging is intended to be associated with goods or services that are not those of the owner of the registered trade-mark, and (ii) the sale, distribution or advertisement of the goods or services in association with the label or packaging would be a sale, distribution or advertisement in association with a confusing trade-mark or trade-name; or (d) manufactures, causes to be manufactured, possesses, imports, exports or attempts to export any label or packaging, in any form, bearing a trade-mark or trade-name, for the purpose of its sale or distribution or for the purpose of the sale, distribution or advertisement of goods or services in association with it, if (i) the person knows or ought to know that the label or packaging is intended to be associated with goods or services that are not those of the owner of the registered trade-mark, and (ii) the sale, distribution or advertisement of the goods or services in association with the label or packaging would be a sale, distribution or advertisement in association with a confusing trade-mark or trade-name. Exception — bona fide use (1.1) The registration of a trade-mark does not prevent a person from making, in a manner that is not likely to have the effect of depreciating the value of the goodwill attaching to the trade-mark, (a) any bona fide use of his or her personal name as a trade-name; or (b) any bona fide use, other than as a trade-mark, of the geographical name of his or her place of business or of any accurate description of the character or quality of his or her goods or services. Exception — utilitarian feature (1.2) The registration of a trade-mark does not prevent a person from using any utilitarian feature embodied in the trade-mark. 23. Subsection 22(2) of the Act is replaced by the following: Action (2) In any action in respect of a use of a trade-mark contrary to subsection (1), the court may decline to order the recovery of damages or profits and may permit the defendant to continue to sell goods bearing the trade-mark that were in the defendant’s possession or under their control at the time notice was given to them that the owner of the registered trade-mark complained of the use of the trade-mark. 24. (1) Subsections 23(1) to (3) of the Act are replaced by the following: Registration of certification marks 23. (1) A certification mark may be adopted and registered only by a person who is not engaged in the manufacture, sale, leasing or hiring of goods or the performance of services such as those in association with which the certification mark is used or proposed to be used. Licence (2) The owner of a certification mark may license others to use it in association with goods or services that meet the defined standard, and the use of the certification mark accordingly is deemed to be use by the owner. Unauthorized use (3) The owner of a registered certification mark may prevent its use by unlicensed persons or in association with any goods or services in respect of which it is registered but to which the licence does not extend. (2) Subsection 23(4) of the English version of the Act is replaced by the following: Action by unincorporated body (4) If the owner of a registered certification mark is an unincorporated body, any action or proceeding to prevent unauthorized use of the certification mark may be brought by any member of that body on behalf of themselves and all other members. 25. Section 24 of the French version of the Act is replaced by the following: Enregistrement d’une marque de commerce créant de la confusion avec la marque de certification 24. Avec le consentement du propriétaire d’une marque de certification, une marque de commerce créant de la confusion avec la marque de certification peut, si elle présente une différence caractéristique, être déposée par toute autre personne en vue d’indiquer que les produits en liaison avec lesquels elle est employée ont été fabriqués, vendus, donnés à bail ou loués, et que les services en liaison avec lesquels elle est employée ont été exécutés par elle comme étant une des personnes ayant droit d’employer la marque de certification, mais l’enregistrement de cette marque de commerce est radié par le registraire sur le retrait du consentement du propriétaire de la marque de certification, ou sur annulation de l’enregistrement de la marque de certification. 26. Section 25 of the Act is replaced by the following: Descriptive certification mark 25. A certification mark that is descriptive of the place of origin of goods or services, and not confusing with any registered trade-mark, is registrable if the applicant is the administrative authority of a country, state, province or municipality that includes or forms part of the area indicated by the certification mark, or is a commercial association that has an office or representative in that area, but the owner of any certification mark registered under this section shall permit its use in association with any goods or services produced or performed in the area of which it is descriptive. 27. (1) Subsection 26(1) of the Act is replaced by the following: Register 26. (1) There shall be kept under the supervision of the Registrar a register of trade-marks and of transfers, disclaimers, amendments, judgments and orders relating to each registered trade-mark. (2) The portion of subsection 26(2) of the Act before paragraph (a) is replaced by the following: Information to be shown (2) The register shall show, with reference to each registered trade-mark, the following: 28. Sections 28 and 29 of the Act are replaced by the following: List of trade-mark agents 28. There shall be kept under the supervision of the Registrar a list of trade-mark agents, which shall include the names of all persons and firms entitled to represent applicants and others in the presentation and prosecution of applications for the registration of a trade-mark or in other business before the Office of the Registrar of Trade-marks. Available to public 29. (1) The following shall be made available to the public at the times and in the manner established by the Registrar: (a) the register; (b) all applications for the registration of a trade-mark, including those abandoned; (c) the list of trade-mark agents; (d) the list of geographical indications kept under subsection 11.12(1); (e) all requests made under paragraph 9(1)(n); and (f) all documents filed with the Registrar relating to a registered trade-mark, an application for the registration of a trade-mark, a request under paragraph 9(1)(n) and objection proceedings under section 11.13. Certified copies (2) The Registrar shall, on request and on payment of the prescribed fee, furnish a copy certified by the Registrar of any entry in the register or lists, or of any of those applications, requests or documents. Destruction of records 29.1 Despite subsection 29(1), the Registrar may destroy (a) an application for the registration of a trade-mark that is refused and any document relating to the application, at any time after six years after the day on which the application is refused or, if an appeal is taken, on which final judgment in the appeal upholding the refusal is given; (b) an application for the registration of a trade-mark that is abandoned and any document relating to the application, at any time after six years after the day on which the application is abandoned; (c) a document relating to an expunged registration of a trade-mark, at any time after six years after the day on which the registration is expunged; (d) a request under paragraph 9(1)(n) and any document relating to it, at any time after six years after (i) the day on which the request is abandoned, (ii) the day on which the request is refused or, if an appeal is taken, on which final judgment in the appeal upholding the refusal is given, or (iii) the day on which a court declares that the badge, crest, emblem or mark in question is invalid or, if an appeal is taken, on which final judgment in the appeal upholding the declaration is given; (e) a document relating to objection proceedings under section 11.13 with respect to a geographical indication that is removed from the list of geographical indications under subsection 11.12(4), at any time after six years after the day on which it is removed; and (f) a document relating to objection proceedings under section 11.13 with respect to which a decision is made that the indication is not a geographical indication, at any time after six years after the day on which the decision is made or, if an appeal is taken, on which final judgment in the appeal upholding the decision is given. 29. (1) Paragraph 30(a) of the Act is replaced by the following: (a) a statement in ordinary commercial terms of the specific goods or services in association with which the trade-mark has been or is proposed to be used; (2) Paragraph 30(f) of the Act is replaced by the following: (f) in the case of a certification mark, particulars of the defined standard that the use of the certification mark is intended to indicate and a statement that the applicant is not engaged in the manufacture, sale, leasing or hiring of goods or the performance of services such as those in association with which the certification mark is used or proposed to be used; (f.1) in the case of a proposed certification mark, a statement that the applicant intends to license others to use the certification mark in Canada in association with goods or services that meet the defined standard; (3) Paragraph 30(h) of the Act is replaced by the following: (h) a representation or description, or both, that permits the trade-mark to be clearly defined and that complies with any prescribed requirements; (4) Section 30 of the Act is amended by adding “and” at the end of paragraph (i) and by adding the following after that paragraph: (j) any prescribed information or statement with respect to the trade-mark. 30. The Act is amended by adding the following after section 30: Standard characters 30.1 An applicant who seeks to register a trade-mark that consists only of letters, numerals, punctuation marks, diacritics or typographical symbols, or of any combination of them, without limiting the trade-mark to any particular font, size or colour shall (a) file a representation under paragraph 30(h) that consists only of characters for which the Registrar has adopted standard characters; (b) include in their application a statement to the effect that they wish the trade-mark to be registered in standard characters; and (c) comply with any prescribed requirements. 31. Sections 31 to 32 of the Act are replaced by the following: Further evidence — registration abroad 31. An applicant whose trade-mark has been duly registered in their country of origin and who claims that the trade-mark is registrable under paragraph 14(1)(b) shall furnish any evidence that the Registrar may require establishing the circumstances on which they rely, including the length of time during which the trade-mark has been used in any country. Further evidence in certain cases 32. (1) An applicant shall furnish the Registrar with any evidence that the Registrar may require establishing that the trade-mark is distinctive at the filing date of the application for its registration if any of the following apply: (a) the applicant claims that their trade-mark is registrable under subsection 12(3); (b) the Registrar’s preliminary view is that the trade-mark is not inherently distinctive; (c) the trade-mark consists exclusively of a single colour or of a combination of colours without delineated contours; (d) the trade-mark consists exclusively or primarily of one or more of the following: (i) the three-dimensional shape of any of the goods specified in the application, or of an integral part or the packaging of any of those goods, (ii) a mode of packaging goods, (iii) a sound, (iv) a scent, (v) a taste, (vi) a texture, (vii) any other prescribed sign. Registration to be restricted (2) The Registrar shall, having regard to the evidence adduced, restrict the registration to the goods or services in association with which, and to the defined territorial area in Canada in which, the trade-mark is shown to be distinctive. 32. Section 33 of the Act is replaced by the following: Filing date 33. (1) The filing date of an application for the registration of a trade-mark in Canada is the day on which the Registrar has received all of the following: (a) an explicit or implicit indication that the registration of the trade-mark is sought; (b) information allowing the identity of the applicant to be established; (c) information allowing the Registrar to contact the applicant; (d) a representation or description of the trade-mark; (e) a list of the goods or services for which registration of the trade-mark is sought; (f) any prescribed fees. Outstanding items (2) The Registrar shall notify the applicant whose application does not contain all the items set out in subsection (1) of the items that are outstanding and require that the applicant submit them within two months of the date of the notice. Despite section 47, that period cannot be extended. Application deemed never filed (3) If the Registrar does not receive the outstanding items within those two months, the application is deemed never to have been filed. However, any fees paid in respect of the application shall not be refunded to the applicant. 33. (1) Subsection 34(1) of the Act is replaced by the following: Date of application abroad deemed date of application in Canada 34. (1) Despite subsection 33(1), when an applicant files an application for the registration of a trade-mark in Canada after the applicant or the applicant’s predecessor in title has applied, in or for any country of the Union other than Canada, for the registration of the same or substantially the same trade-mark in association with the same kind of goods or services, the filing date of the application in or for the other country is deemed to be the filing date of the application in Canada and the applicant is entitled to priority in Canada accordingly despite any intervening use in Canada or making known in Canada or any intervening application or registration, if (a) the filing date of the application in Canada is within a period of six months after the date on which the earliest application was filed in or for any country of the Union for the registration of the same or substantially the same trade-mark in association with the same kind of goods or services; (b) the applicant files a request for priority in the prescribed time and manner and informs the Registrar of the filing date and country or office of filing of the application on which the request is based; (c) the applicant, at the filing date of the application in Canada, is a citizen or national of or domiciled in a country of the Union or has a real and effective industrial or commercial establishment in a country of the Union; and (d) the applicant furnishes, in accordance with any request under subsections (2) and (3), evidence necessary to fully establish the applicant’s right to priority. (2) Section 34 of the Act is amended by adding the following after subsection (3): Withdrawal of request (4) An applicant may, in the prescribed time and manner, withdraw a request for priority. Extension (5) An applicant is not permitted to apply under section 47 for an extension of the six-month period referred to in paragraph (1)(a) until that period has ended, and the Registrar is not permitted to extend the period by more than seven days. 34. Subsection 37(1) of the Act is amended by striking out “or” at the end of paragraph (b), by adding “or” at the end of paragraph (c) and by replacing the portion after paragraph (c) with the following: (d) the trade-mark is not distinctive. If the Registrar is not so satisfied, the Registrar shall cause the application to be advertised in the prescribed manner. 35. Subsections 38(6) to (8) of the Act are replaced by the following: Power to strike (6) At the applicant’s request, the Registrar may — at any time before the day on which the applicant files a counter statement — strike all or part of the statement of opposition if the statement or part of it (a) is not based on any of the grounds set out in subsection (2); or (b) does not set out a ground of opposition in sufficient detail to enable the applicant to reply to it. Counter statement (7) The applicant shall file a counter statement with the Registrar and serve a copy on the opponent in the prescribed manner and within the prescribed time after a copy of the statement of opposition has been forwarded to the applicant. The counter statement need only state that the applicant intends to respond to the opposition. Evidence and hearing (8) Both the opponent and the applicant shall be given an opportunity, in the prescribed manner and within the prescribed time, to submit evidence and to make representations to the Registrar unless (a) the opposition is withdrawn or deemed under subsection (10) to have been withdrawn; or (b) the application is abandoned or deemed under subsection (11) to have been abandoned. Service (9) The opponent and the applicant shall, in the prescribed manner and within the prescribed time, serve on each other any evidence and written representations that they submit to the Registrar. Deemed withdrawal of opposition (10) The opposition is deemed to have been withdrawn if, in the prescribed circumstances, the opponent does not submit and serve either evidence under subsection (8) or a statement that the opponent does not wish to submit evidence. Deemed abandonment of application (11) The application is deemed to have been abandoned if the applicant does not file and serve a counter statement within the time referred to in subsection (7) or if, in the prescribed circumstances, the applicant does not submit and serve either evidence under subsection (8) or a statement that the applicant does not wish to submit evidence. Decision (12) After considering the evidence and representations of the opponent and the applicant, the Registrar shall refuse the application, reject the opposition, or refuse the application with respect to one or more of the goods or services specified in it and reject the opposition with respect to the others. He or she shall notify the parties of the decision and the reasons for it. 36. The Act is amended by adding the following after section 39: Divisional application 39.1 (1) After having filed an application for the registration of a trade-mark, an applicant may limit the original application to one or more of the goods or services that were within its scope and file a divisional application for the registration of the same trade-mark in association with any other goods or services that were (a) within the scope of the original application on its filing date; and (b) within the scope of the original application as advertised, if the divisional application is filed on or after the day on which the application is advertised under subsection 37(1). Identification (2) A divisional application shall indicate that it is a divisional application and shall, in the prescribed manner, identify the corresponding original application. Separate application (3) A divisional application is a separate application, including with respect to the payment of any fees. Filing date (4) A divisional application’s filing date is deemed to be the original application’s filing date. Division of divisional application (5) A divisional application may itself be divided under subsection (1), in which case this section applies as if that divisional application were an original application. 37. (1) Subsection 40(1) of the Act is replaced by the following: Registration of trade-marks 40. (1) When an application for the registration of a trade-mark, other than a proposed trade-mark or proposed certification mark, is allowed, the Registrar shall register the trade-mark and issue a certificate of its registration. (2) Subsection 40(2) of the French version of the Act is replaced by the following: Marque de commerce projetée (2) Lorsqu’une demande d’enregistrement d’une marque de commerce projetée est admise, le registraire en donne avis au requérant. Il enregistre la marque de commerce et délivre un certificat de son enregistrement après avoir reçu une déclaration portant que le requérant, son successeur en titre ou l’entité à qui est octroyée, par le requérant ou avec son autorisation, une licence d’emploi de la marque de commerce aux termes de laquelle il contrôle directement ou indirectement les caractéristiques ou la qualité des produits et services a commencé à employer la marque de commerce au Canada, en liaison avec les produits ou services spécifiés dans la demande. (3) Subsection 40(3) of the Act is replaced by the following: Proposed certification mark (2.1) When an application for the registration of a proposed certification mark is allowed, the Registrar shall give notice to the applicant accordingly and shall register the certification mark and issue a certificate of registration on receipt of a declaration that the use of the certification mark in Canada, in association with the goods or services specified in the application, has been commenced by an entity that is licensed by or with the authority of the applicant to use the certification mark. Abandonment of application (3) An application for registration referred to in subsection (2) or (2.1) is deemed to be abandoned if the Registrar has not received the declaration before the later of (a) six months after the date of the Registrar’s notice, and (b) three years after the filing date of the application in Canada. 38. (1) The portion of subsection 41(1) of the Act before paragraph (a) is replaced by the following: Amendments to register 41. (1) The Registrar may, on application by the registered owner of a trade-mark made in the prescribed manner and on payment of the prescribed fee, make any of the following amendments to the register: (2) Subsection 41(1) of the Act is amended by striking out “or” at the end of paragraph (d), by adding “or” at the end of paragraph (e) and by adding the following after paragraph (e): (f) subject to the regulations, merge registrations of the trade-mark that stem, under section 39.1, from the same original application. (3) Section 41 of the Act is amended by adding the following after subsection (2): Obvious error (3) The Registrar may, within six months after an entry in the register is made, 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 that the entry is made, on file in the Registrar’s office. 39. Subsection 45(1) of the Act is replaced by the following: Registrar may request evidence of user 45. (1) The Registrar may at any time — and, at the written request made after three years from the date of the registration of a trade-mark by any person who pays the prescribed fee, the Registrar shall, unless he or she sees good reason to the contrary — give notice to the registered owner of the trade-mark requiring the registered owner to furnish within three months an affidavit or a statutory declaration showing, with respect to all the goods or services specified in the registration or to those that the Registrar may specify in the notice, whether the trade-mark was in use in Canada at any time during the three-year period immediately preceding the date of the notice and, if not, the date when it was last so in use and the reason for the absence of such use since that date. 40. Section 48 of the Act is amended by adding the following after subsection (3): Removal of registration (4) The Registrar shall 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. 41. Section 49 of the Act and the heading before it are replaced by the following: CHANGE OF PURPOSE IN USE OF TRADE-MARK Change of purpose 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 trade-mark or has used it for any other of those purposes or in any other of those manners. 42. The Act is amended by adding the following after section 51: OFFENCES AND PUNISHMENT Sale, etc., of goods 51.01 (1) Every person commits an offence who sells or offers for sale, or distributes on a commercial scale, any goods in association with a trade-mark, if that sale or distribution is or would be contrary to section 19 or 20 and the person knows that (a) the trade-mark is identical to, or cannot be distinguished in its essential aspects from, a trade-mark registered for such goods; and (b) the owner of that registered trade-mark has not consented to the sale, offering for sale, or distribution of the goods in association with the trade-mark. (c) [Deleted] Manufacture, etc., of goods (2) Every person commits an offence who manufactures, causes to be manufactured, possesses, imports, exports or attempts to export any goods, for the purpose of their sale or of their distribution on a commercial scale, if that sale or distribution would be contrary to section 19 or 20 and the person knows that (a) the goods bear a trade-mark that is identical to, or that cannot be distinguished in its essential aspects from, a trade-mark registered for such goods; and (b) the owner of that registered trade-mark has not consented to having the goods bear the trade-mark. (c) [Deleted] Services (3) Every person commits an offence who sells or advertises services in association with a trade-mark, if that sale or advertisement is contrary to section 19 or 20 and the person knows that (a) the trade-mark is identical to, or cannot be distinguished in its essential aspects from, a registered trade-mark registered for such services; and (b) the owner of the registered trade-mark has not consented to the sale or advertisement in association with the trade-mark. (c) [Deleted] Labels or packaging (4) Every person commits an offence who manufactures, causes to be manufactured, possesses, imports, exports or attempts to export any label or packaging, in any form, for the purpose of its sale or of its distribution on a commercial scale or for the purpose of the sale, distribution on a commercial scale or advertisement of goods or services in association with it, if that sale, distribution or advertisement would be contrary to section 19 or 20 and the person knows that (a) the label or packaging bears a trade-mark that is identical to, or that cannot be distinguished in its essential aspects from, a registered trade-mark; (b) the label or packaging is intended to be associated with goods or services for which that registered trade-mark is registered; and (c) the owner of that registered trade-mark has not consented to having the label or packaging bear the trade-mark. (d) [Deleted] Trafficking in labels or packaging (5) Every person commits an offence who sells or offers for sale, or distributes on a commercial scale, any label or packaging, in any form, if the sale, distribution or advertisement of goods or services in association with the label or packaging would be contrary to section 19 or 20 and the person knows that (a) the label or packaging bears a trade-mark that is identical to, or that cannot be distinguished in its essential aspects from, a registered trade-mark; (b) the label or packaging is intended to be associated with goods or services for which that registered trade-mark is registered; (c) the owner of that registered trade-mark has not consented to having the label or packaging bear the trademark. Registration of trade-mark (5.1) In a prosecution for an offence under any of subsections (1) to (5), it is not necessary for the prosecutor to prove that the accused knew that the trade-mark was registered. Punishment (6) Every person who commits an offence under any of subsections (1) to (5) is liable (a) on conviction on indictment, to a fine of not more than $1,000,000 or to imprisonment for a term of not more than five years or to both; or (b) on summary conviction, to a fine of not more than $25,000 or to imprisonment for a term of not more than six months or to both. Limitation Period (7) Proceedings by way of summary conviction for an offence under this section may be instituted no later than two years after the day on which the subject-matter of the proceedings arose. Disposition order (8) The court before which any proceedings for an offence under this section are taken may, on a finding of guilt, order that any goods, labels, or packaging in respect of which the offence was committed, any advertising materials relating to those goods and any equipment used to manufacture those goods, labels or packaging be destroyed or otherwise disposed of. Notice (9) Before making an order for the destruction or other disposition of equipment under subsection (8), the court shall require that notice be given to the owner of the equipment and to any other person who, in the opinion of the court, appears to have a right or interest in the equipment, unless the court is of the opinion that the interests of justice do not require that the notice be given. 43. The Act is amended by adding the following after section 51.01: IMPORTATION AND EXPORTATION Interpretation Definitions 51.02 The following definitions apply in sections 51.03 to 51.12. “customs officer”« agent des douanes » “customs officer” has the meaning assigned by the definition “officer” in subsection 2(1) of the Customs Act. “Minister”« ministre » “Minister” means the Minister of Public Safety and Emergency Preparedness. “relevant registered trade-mark”« marque de commerce déposée en cause » “relevant registered trade-mark” means a trade-mark registered for goods that is identical to, or cannot be distinguished in its essential aspects from, a trade-mark on such goods, including their labels or packaging, that are detained by a customs officer. “working day”« jour ouvrable » “working day” means a day other than a Saturday or a holiday. Prohibition No importation or exportation 51.03 (1) Goods shall not be imported or exported if the goods or their labels or packaging bear — without the consent of the owner of a registered trade-mark for such goods — a trade-mark that is identical to, or that cannot be distinguished in its essential aspects from, that registered trade-mark. Exception (2) Subsection (1) does not apply if (a) the trade-mark was applied with the consent of the owner of the trade-mark in the country where it was applied; (b) the sale or distribution of the goods or, in the case where the trade-mark is on the goods’ labels or packaging, of the goods in association with the labels or packaging would not be contrary to this Act; (c) the goods are imported or exported by an individual in their possession or baggage and the circumstances, including the number of goods, indicate that the goods are intended only for their personal use; or (d) the goods, while being shipped from one place outside Canada to another, are in customs transit control or customs transhipment control in Canada. Restriction (3) The contravention of subsection (1) does not give rise to a remedy under section 53.2. Request for Assistance Request for assistance 51.04 (1) The owner of a registered trade-mark may file with the Minister, in the form and manner specified by the Minister, a request for assistance in pursuing remedies under this Act with respect to goods imported or exported in contravention of section 51.03. Information in request (2) The request for assistance shall include the trade-mark owner’s name and address in Canada and any other information that is required by the Minister, including information about the registered trade-mark and the goods for which it is registered. Validity period (3) A request for assistance is valid for a period of two years beginning on the day on which it is accepted by the Minister. The Minister may, at the request of the trade-mark owner, extend the period for two years, and may do so more than once. Security (4) The Minister may, as a condition of accepting a request for assistance or of extending a request’s period of validity, require that the trade-mark owner furnish security, in an amount and form fixed by the Minister, for the payment of an amount for which the trade-mark owner becomes liable under section 51.09. Update (5) The trade-mark owner shall inform the Minister in writing, as soon as practicable, of any changes to (a) the validity of the registered trade-mark that is the subject of the request for assistance; (b) the ownership of the trade-mark; or (c) the goods for which the trade-mark is registered. Measures Relating to Detained Goods Provision of information by customs officer 51.05 A customs officer who is detaining goods under section 101 of the Customs Act may, in the officer’s discretion, to obtain information about whether the importation or exportation of the goods is prohibited under section 51.03, provide the owner of a relevant registered trade-mark with a sample of the goods and with any information about the goods that the customs officer reasonably believes does not directly or indirectly identify any person. Provision of information to pursue remedy 51.06 (1) A customs officer who is detaining goods under section 101 of the Customs Act and who has reasonable grounds to suspect that the importation or exportation of the goods is prohibited under section 51.03 may, in the officer’s discretion, if the Minister has accepted a request for assistance with respect to a relevant registered trade-mark filed by its owner, provide that owner with a sample of the goods and with information about the goods that could assist them in pursuing a remedy under this Act, such as (a) a description of the goods and their characteristics; (b) the name and address of their owner, importer, exporter and consignee and of the person who made them; (c) their quantity; (d) the countries in which they were made and through which they passed in transit; and (e) the day on which they were imported, if applicable. Detention (2) Subject to subsection (3), the customs officer shall not detain, for the purpose of enforcing section 51.03, the goods for more than 10 working days — or, if the goods are perishable, for more than five days — after the day on which the customs officer first sends or makes available a sample or information to the owner under subsection (1). At the request of the owner made while the goods are detained for the purpose of enforcing section 51.03, the customs officer may, having regard to the circumstances, detain non-perishable goods for one additional period of not more than 10 working days. Notice of proceedings (3) If, before the goods are no longer detained for the purpose of enforcing of section 51.03, the owner of a relevant registered trade-mark has provided the Minister, in the manner specified by the Minister, with a copy of a document filed with a court commencing proceedings to obtain a remedy under this Act with respect to the detained goods, the customs officer shall continue to detain them until the Minister is informed in writing that (a) the proceedings are finally disposed of, settled or abandoned; (b) a court directs that the goods are no longer to be detained for the purpose of the proceedings; or (c) the trade-mark owner consents to the goods no longer being so detained. Continued detention (4) The occurrence of any of the events referred to in paragraphs (3)(a) to (c) does not preclude a customs officer from continuing to detain the goods under the Customs Act for a purpose other than with respect to the proceedings. Restriction on information use — section 51.05 51.07 (1) A person who receives a sample or information that is provided under section 51.05 shall not use the information, or information that is derived from the sample, for any purpose other than to give information to the customs officer about whether the importation or exportation of the goods is prohibited under section 51.03. Restriction on information use — subsection 51.06(1) (2) A person who receives a sample or information that is provided under subsection 51.06(1) shall not use the information, or information that is derived from the sample, for any purpose other than to pursue remedies under this Act. For greater certainty (3) For greater certainty, subsection (2) does not prevent the confidential communication of information about the goods for the purpose of reaching an out-of-court settlement. Inspection 51.08 After a sample or information has been provided under subsection 51.06(1), a customs officer may, in the officer’s discretion, give the owner, importer, exporter and consignee of the detained goods and the owner of the relevant registered trade-mark an opportunity to inspect the goods. Liability for charges 51.09 (1) The owner of a relevant registered trade-mark who has received a sample or information under subsection 51.06(1) is liable to Her Majesty in right of Canada for the storage and handling charges for the detained goods— and, if applicable, for the charges for destroying them — for the period beginning on the day after the day on which a customs officer first sends or makes available a sample or information to that owner under that subsection and ending on the first day on which one of the following occurs: (a) the goods are no longer detained for the purpose of enforcing section 51.03 or, if subsection 51.06(3) applies, for the purpose of the proceedings referred to in that subsection; (b) the Minister receives written notification in which the trade-mark owner states that the importation or exportation of the goods does not, with respect to the owner’s relevant registered trade-mark, contravene section 51.03; (c) the Minister receives written notification in which the trade-mark owner states that they will not, while the goods are detained for the purpose of enforcing section 51.03, commence proceedings to obtain a remedy under this Act with respect to them. Exception — paragraph (1)(a) (2) Despite paragraph (1)(a), if the goods are forfeited under subsection 39(1) of the Customs Act and the Minister did not, before the end of the detention of the goods for the purpose of enforcing section 51.03, receive a copy of a document filed with a court commencing proceedings to obtain a remedy under this Act with respect to the detained goods or the written notification referred to in paragraph (1)(b) or (c), the period ends on the day on which the goods are forfeited. Exception — paragraph (1)(c) (3) Despite paragraph (1)(c), if the goods are forfeited under subsection 39(1) of the Customs Act after the Minister has received the written notification referred to in that paragraph, the period ends on the day on which the goods are forfeited. Joint and several or solidary liability (4) The owner and the importer or exporter of goods that are forfeited in the circumstances set out in subsection (2) or (3) are jointly and severally, or solidarily, liable to the owner of the relevant registered trade-mark for all the charges under subsection (1) paid by the owner of the relevant registered trade-mark with respect to the period (a) in the circumstances referred to in subsection (2), beginning on the day on which the goods are no longer detained for the purpose of enforcing section 51.03 and ending on the day on which the goods are forfeited; and (b) in the circumstances referred to in subsection (3), beginning on the day on which the Minister receives the written notification referred to in paragraph (1)(c) and ending on the day on which the goods are forfeited. Exception (5) Subsections (1) to (3) do not apply if (a) the detention of the goods for the purpose of enforcing section 51.03 ends before the expiry of 10 working days — or, if the goods are perishable, before the expiry of five days — after the day on which the customs officer first sends or makes available a sample or information to the trade-mark owner under subsection 51.06(1); and (b) the Minister has not, by the end of the detention, received a copy of a document filed with a court commencing proceedings to obtain a remedy under this Act with respect to the detained goods or the written notification referred to in paragraph (1)(b) or (c). No Liability No liability 51.1 Neither Her Majesty nor a customs officer is liable for any loss or damage suffered in relation to the enforcement or application of sections 51.03 to 51.06 and 51.08 because of (a) the detention of goods, except if the detention contravenes subsection 51.06(2); (b) the failure to detain goods; or (c) the release or cessation of detention of any detained goods, except if the release or cessation contravenes subsection 51.06(3). Powers of Court Relating to Detained Goods Application to court 51.11 (1) In the course of proceedings referred to in subsection 51.06(3), the court may, on the application of the Minister or a party to the proceedings, (a) impose conditions on the storage or detention of the goods that are the subject of the proceedings; or (b) direct that the goods are no longer to be detained for the purpose of the proceedings, on any conditions that the court may impose, if their owner, importer, exporter or consignee furnishes security in an amount fixed by the court. Minister’s consent (2) If a party applies to have the detained goods stored in a place other than a bonded warehouse or a sufferance warehouse, as those terms are defined in subsection 2(1) of the Customs Act, the Minister must consent to the storage of the goods in that place before a condition to that effect is imposed under subsection (1). Customs Act (3) The court may impose a condition described in subsection (2) despite section 31 of the Customs Act. Continued detention (4) A direction under paragraph (1)(b) that the goods are no longer to be detained for the purpose of the proceedings does not preclude a customs officer from continuing to detain the goods under the Customs Act for another purpose. Security (5) In the course of proceedings referred to in subsection 51.06(3), the court may, on the application of the Minister or a party to the proceedings, require the owner of the relevant registered trade-mark to furnish security, in an amount fixed by the court, (a) to cover duties, as defined in subsection 2(1) of the Customs Act, storage and handling charges, and any other amount that may become chargeable against the goods; and (b) to answer any damages that may by reason of the detention be sustained by the owner, importer, exporter or consignee of the goods. Damages against trade-mark owner 51.12 A court may award damages against the owner of a relevant registered trade-mark who commenced proceedings referred to in subsection 51.06(3) to the owner, importer, exporter or consignee of the goods who is a party to the proceedings for losses, costs or prejudice suffered as a result of the detention of goods if the proceedings are dismissed or discontinued. 44. The definition “release” in section 52 of the Act is repealed. 45. Sections 53.2 and 53.3 of the Act are replaced by the following: Power of court to grant relief 53.2 (1) If a court is satisfied, on application of any interested person, that any act has been done contrary to this Act, the court may make any order that it considers appropriate in the circumstances, including an order providing for relief by way of injunction and the recovery of damages or profits, for punitive damages and for the destruction or other disposition of any offending goods, packaging, labels and advertising material and of any equipment used to produce the goods, packaging, labels or advertising material. Notice to interested persons (2) Before making an order for destruction or other disposition, the court shall direct that notice be given to any person who has an interest or right in the item to be destroyed or otherwise disposed of, unless the court is of the opinion that the interests of justice do not require that notice be given. Unaltered state — exportation, sale or distribution 53.3 (1) A court is not permitted, in any proceeding under section 53.1 or 53.2, to make an order under that section requiring or permitting the goods to be exported, sold or distributed in an unaltered state, except in a manner that does not affect the legitimate interests of the owner of the registered trade-mark or except in exceptional circumstances, if the court finds that (a) goods bearing the registered trade-mark have been imported into Canada in such a manner that the distribution of the goods in Canada would be contrary to this Act; and (b) the registered trade-mark has, without the consent of the owner, been applied to those goods with the intent of counterfeiting or imitating the trade-mark, or of deceiving the public and inducing them to believe that the goods were made with the consent of the owner. Removal of trade-mark (2) Subsection (1) also applies with respect to goods for which the only alteration is the removal of the trade-mark. 46. Section 55 of the Act is replaced by the following: Jurisdiction of Federal Court 55. The Federal Court has jurisdiction to entertain any action or proceeding, other than a proceeding under section 51.01, for the enforcement of any of the provisions of this Act or of any right or remedy conferred or defined by this Act. 47. Subsection 57(1) of the Act is replaced by the following: Exclusive jurisdiction of Federal Court 57. (1) The Federal Court has exclusive original jurisdiction, on the application of the Registrar or of any person interested, to order that any entry in the register be struck out or amended on the ground that at the date of the application the entry as it appears on the register does not accurately express or define the existing rights of the person appearing to be the registered owner of the trade-mark. 48. Section 60 of the Act is replaced by the following: Registrar to transmit documents 60. When any appeal or application has been made to the Federal Court under any of the provisions of this Act, the Registrar shall, at the request of any of the parties to the proceedings and on the payment of the prescribed fee, transmit to the Court all documents on file in the Registrar’s office relating to the matters in question in those proceedings, or copies of those documents certified by the Registrar. 49. Section 64 of the Act is replaced by the following: Electronic form and means 64. (1) Subject to the regulations, any document, information or fee that is provided to the Registrar under this Act may be provided in any electronic form, and by any electronic means, that is specified by the Registrar. Collection, storage, etc. (2) Subject to the regulations, the Registrar may use electronic means to create, collect, receive, store, transfer, distribute, publish, certify or otherwise deal with documents or information. Definition (3) In this section, “electronic”, in reference to a form or means, includes optical, magnetic and other similar forms or means. 50. (1) Paragraphs 65(a) and (b) of the Act are replaced by the following: (a) the form of the register to be kept under this Act, and of the entries to be made in it; (b) applications to the Registrar; (b.1) the merger of registrations under paragraph 41(1)(f), including, for the purpose of renewal under section 46, the deemed day of registration or last renewal; (2) Paragraph 65(d) of the Act is replaced by the following: (d) certificates of registration; (3) Section 65 of the Act is amended by striking out “and” at the end of paragraph (d.1), by adding “and” at the end of paragraph (e) and by adding the following after paragraph (e): (f) the provision of documents, information or fees to the Registrar under this Act, including the time at which they are deemed to be received by the Registrar. 51. Section 69 of the Act and the heading before it are replaced by the following: TRANSITIONAL PROVISIONS Disclosure of documents 69. The disclosure of documents — on which entries in the register to be kept under paragraph 26(1)(b), as it read immediately before the day on which subsection 27(1) of the Combating Counterfeit Products Act comes into force, are based — is subject to subsection 50(6), as it read on June 8, 1993. Standard characters 70. Section 30.1 does not apply with respect to an application for registration whose filing date is before the day on which section 30 of the Combating Counterfeit Products Act comes into force. Filing date 71. (1) Subsection 33(1), as enacted by section 32 of the Combating Counterfeit Products Act, does not apply to an application for registration with respect to which all of the items set out in that subsection 33(1) have been received by the Registrar before the day on which that section 32 comes into force. Trade-marks Regulations (2) Section 25 of the Trade-marks Regulations, as it read immediately before the day on which section 32 of Combating Counterfeit Products Act comes into force, continues to apply to an application for registration referred to in subsection (1) that does not have a filing date as of that day. Priority 72. Section 34, as it read immediately before the day on which subsection 33(1) of the Combating Counterfeit Products Act comes into force, continues to apply with respect to an application for registration that has a filing date, established without taking section 34 into account, that is before that day. 52. Section 69 of the Act is repealed. Replacement of “wares” 53. The Act is amended by replacing “wares”, wherever it occurs, with “goods”. Replacement of “colis” 54. The French version of the Act is amended by replacing “colis” with “emballages”, with any grammatical changes that the circumstances require, in the following provisions: (a) subsections 4(1) and (3); and (b) section 8. Replacement of “date of filing” 55. The English version of the Act is amended by replacing “date of filing” with “filing date” in the following provisions: (a) the portion of subsection 16(2) before paragraph (a); and (b) subsection 21(1). Replacement of “utiliser”, etc. 56. The French version of the Act is amended by replacing “utiliser”, “utilisé”, “utilisée” and “utilisation” with “employer”, “employé”, “employée” and “emploi”, respectively, with any grammatical changes that the circumstances require, in the following provisions: (a) the portion of paragraph 7(d) before subparagraph (i); (b) paragraph 9(1)(f); (c) section 11.1; (d) the portion of subsection 11.14(2) before paragraph (a); (e) the portion of subsection 11.15(2) before paragraph (a); (f) subsections 11.16(1) and (2); (g) the portion of subsection 11.17(1) before paragraph (a); (h) subsections 11.18(1) to (4); (i) the portion of section 11.2 before paragraph (a); (j) subsection 17(2); (k) subsection 20(2); (l) subsection 32(2). TRANSITIONAL PROVISION Amending the register 57. The Registrar of Trade-marks may amend the register kept under section 26 of the Trade-marks Act to reflect the amendments to that Act that are made by this Act. CONSEQUENTIAL AMENDMENTS R.S., c. A-1 Access to Information Act 58. Schedule II to the Access to Information Act is amended by striking out the reference to Trade-marks Act Loi sur les marques de commerce and the corresponding reference to “subsection 50(6)”. R.S., c. C-46 Criminal Code 59. (1) The definition “offence” in section 183 of the Criminal Code is amended by adding the following after paragraph (d): (d.1) section 42 (offences related to infringement of copyright) of the Copyright Act, (2) The definition “offence” in section 183 of the Act is amended by striking out “or” at the end of subparagraph (i)(vi), by adding “or” at the end of paragraph (j) and by adding the following after paragraph (j): (k) section 51.01 (offences related to goods, labels, packaging or services) of the Trade-marks Act, R.S., c. 1 (2nd Supp.) Customs Act 60. Subsection 107(5) of the Customs Act is amended by adding the following after paragraph (l): (l.1) any person who may receive information under section 44.03 or subsection 44.04(1) of the Copyright Act, solely for the purposes for which that person is entitled to the information; (l.2) any person who may receive information under section 51.05 or subsection 51.06(1) of the Trade-marks Act, solely for the purposes for which that person is entitled to the information; 2007, c. 25 Olympic and Paralympic Marks Act 61. Paragraphs 5(1)(a) and (b) of the Olympic and Paralympic Marks Act are replaced by the following: (a) of any offending goods, packaging, labels and advertising material; and (b) of any equipment used to apply to those goods, packaging, labels or advertising material a mark whose adoption or use is prohibited under section 3. Replacement of “wares” 62. The Act is amended by replacing “wares”, wherever it occurs, with “goods”. COMING INTO FORCE Order in council 63. (1) Subject to subsections (2) and (3), the provisions of this Act — other than sections 1, 3 and 4, subsections 7(1) and (4), sections 10, 11 and 14, subsection 15(2), sections 19, 22, 25 and 26, subsection 37(2) and sections 42, 45, 46, 53, 54, 56, 59, 61 and 62 — come into force on a day or days to be fixed by order of the Governor in Council. Order in council (2) Sections 2, 5 and 6, subsection 7(6) and sections 43, 44 and 60 come into force on a day to be fixed by order of the Governor in Council. Order in council (3) Sections 52 and 58 come into force on a day to be fixed by order of the Governor in Council. Published under authority of the Speaker of the House of Commons