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Some hard Acts to follow

IP practitioners in Canada have had their work cut out keeping on top of the barrage of legislative changes that have come their way in the past two years. Now the challenge is to implement them, reports Michael Loney

It is not hard to identify the biggest IP issue in Canada at the moment: the government has formed an addiction to amending its IP acts. "There is a great deal going on right now in IP in Canada," reports David Schwartz, president of the Intellectual Property Institute of Canada (IPIC). "We have now seen three years of change. Three successive budget bills have had important IP legislation in them. Each of those bills brought major IP changes, which is very unusual. IP legislation typically is not routinely amended. So we have seen a great number of changes coming into effect over short order."

Last year, the most sweeping changes to the Trademarks Act in 60 years were enacted (including to its name – it was formerly the Trade-marks Act). They were lumped in to a budget bill without warning and caught trade mark practitioners by surprise.

The overhaul incorporates many changes, including increased fees for filing, simplified filing of applications, and replacing some of the unique aspects of Canada's trade mark act such as "trade-mark" becoming "trademark" and the definition of trade mark being expanded.

The changes were brought in to move Canada toward adhering to international trade mark treaties including the Madrid Protocol, the Nice Agreement and the Singapore Treaty. The Nice Classification of goods and services will be adopted, for example.

However, critics noted that some changes had nothing to do with Madrid or other agreements. One of the most important announced changes is simplifying the filing of applications so that applicants for registration in Canada will no longer need to identify a date of first use of the mark in Canada. In addition, details of use and registration of the mark abroad will no longer be required. Applications previously had to be filed on the basis of proposed use or intent to use in Canada, or there had to be a corresponding foreign registration and use.

The amendments received royal assent in June last year, but will take some time to implement. For example, starting this autumn the Canadian Intellectual Property Office will be accepting trade mark applications filed with their goods and services grouped and classed according to the Nice Classification.

The government was far from done there, however.

In December the Combating Counterfeit Products Act received royal assent after first being introduced in March 2013. The Bill added new prohibitions and offences intended to assist in tackling the distribution of counterfeit products in Canada.

Also in December changes to the Patent Act and Industrial Design Act included in Bill C-43 received Royal Assent. The amendments to the Patent Act included easing the requirements for obtaining a filing date for a patent application, requiring that an applicant be notified of a missed due date before an application is deemed to be abandoned and providing that a patent may not be invalidated for non-compliance with certain requirements relating to the application on the basis of which the patent was granted. The amendments to the Industrial Design Act included provisions relating to the contents of an application for the registration of a design, the requirements to be a registrable design, the grace period for filing a design and the term of an exclusive right for a design.

New year, new changes

The government followed this up this year with further proposals to amend Canada's IP acts to "further modernise Canada's intellectual property framework to keep pace with internationally recognised best practices".

In its 2015 Budget in April, the government proposed changes to the Trademarks Act, Patent Act and Industrial Design Act to protect the confidential communications between clients and intellectual property advisers, in line with countries such as Australia, New Zealand and the UK. The changes will also allow CIPO to extend important deadlines in force majeure events.

These changes were welcomed among IP practitioners. IPIC noted: "With this, Canadian businesses are better assured that they can speak openly with their intellectual property advisors in order to obtain the best possible advice, knowing that these conversations will not be revealed to their competitors through a court process or litigation. Protecting such confidential communications will allow Canadian businesses to be more competitive in Canada and overseas, driving economic growth and creating jobs for Canadians."

It added: "Allowing the Canadian Intellectual Property Office the ability to extend deadlines in cases of force majeure events will help avoid unintentional loss of IP rights where, for example, floods or ice storms prevent the timely filing of documents with the Office."

More controversial were changes to the Copyright Act also in April, which extended the term of protection for sound recordings to 70 years from 50 years. The government's Economic Action Plan 2015 said: "This will ensure that performers and record labels are fairly compensated for the use of their music for an additional 20 years."

"The changes were brought in to move Canada toward adhering to international trade mark treaties including the Madrid Protocol, the Nice Agreement and the Singapore Treaty"

Canadian professor Michael Geist on his popular blog noted: "Canada will extend term without any public discussion or consultation, yet other studies have found that retroactive extension does not lead to increased creation and that the optimal term length should enable performers and record labels to recoup their investment, not extend into near-unlimited terms to the detriment of the public. For Canadian consumers, the extension could cost millions of dollars as works that were scheduled to come into the public domain will now remain locked down for decades."

Geist speculated that the government was taking the controversial step because of the even-more-controversial Trans Pacific Partnership (TPP) agreement.

"The TPP is nearing the end game and the US is still demanding many changes to Canadian copyright law, including copyright term extension for all works (not just sound recordings)," he said. "The Canadian government's strategy in recent years has been to enact reforms before the trade agreements are finalised in order to enhance its bargaining position."

The government also announced its intention to amend the Copyright Act to allow Canada to implement the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who are Blind, Visually Impaired or Otherwise Print Disabled.

Despite all the legislative upheaval of the past few years, in many ways the hard work starts now. The details of all this are yet to be worked out, however.

"So much of the practical effects will be dictated by the regulations," says Schwartz. "In our understanding many of the relevant regulations are unlikely to be published in proposed form for public comment until late in 2016. So we see a broad general framework here, but there will be a lot of leeway for how implementation occurs. There would be an opportunity at the regulation level to put in safeguards about many of the concerns people may have and handle some of these matters in different ways. In some respects right now we have the broad concepts, but we do not know what the thinking may be as to how to practically implement the law.

"So it's very much a two-step process where we will not understand how these mechanisms will function until the regulation implementation occurs."


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