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Big trademark changes taking place in Canada and Asia

Some INTA Annual Meeting attendees got down to business early by attending the Academic Course on International Law and Practice on Saturday. The audience was a mixture of private practice lawyers, in-house counsel and students

Patty Chan of Vivien Chan & Co highlighted the changes in Chinese trademark law. These include codification of the previous Supreme Court interpretation of the scope of the principal-agent relationship, tighter restrictions on opposition, prohibition of the labeling of words as a “well-known trademark” on products, heavier damages and administrative penalties for infringements, and a new defense to alleged infringers if the owner did not use the mark in the past three years.

R. Scott MacKendrick of Bereskin & Parr highlighted some recent and potential changes in Canada. One is Bill C-8, the Combating Counterfeit Products Act, which is intended to give trademark and copyright owners additional options in dealing with the importation and sale of counterfeit goods. The proposed bill provides for criminal sanctions for counterfeiting a registered mark and provides a method for requesting customs assistance to address trademarked counterfeits. More recently, an Omnibus bill proposed modifications to the Trade-marks Act including deletion of use as a registration requirement, goods and services being Nice classified, and renewals being reduced.

In the India session, Pravin Anand of Anand and Anand informed the audience his country now has 62 marks designated as well known. “The advantage is the registrar acts like a watchdog,” he said, pointing out it is inefficient and time-consuming to tackle infringements on regular trademarks. Anand also noted the challenges of fighting trademark infringement in Indian movies, giving the example of a scene in a recent movie in which a G4S Security Services guard was depicted sleeping on duty. He gave two lessons: go to court before the movie is released because courts are reluctant to grant injunctions against movies that are already out; and take advantage of technology that is now available to blur portions of movies.

The Australia and New Zealand session was particularly entertaining, including samples of Vegemite and Marmite being handed out, a discussion of why most countries need not bother to qualify for the Rugby World Cup because either Australia or New Zealand will win, and, eventually, some talk about the two countries’ trademark laws. Marion Heathcote of Davies Collison Cave gave an update on changes in Australia, including its plain packaging law introduced in 2012. She noted other products are likely to be targeted soon. “It is too easy to separate this out as an issue about tobacco – it is an issue about trademarks,” she said.

Nick Holmes of Davies Collison Cave highlighted new legislation to protect the Maori people’s haka, the ancestral war dance. The Haka Ka Mate Attribution Bill provides right of attribution for commercial use of the haka in publications, movies or “communication to the public”. The Ngati Toa tribe had tried to register its haka as a trademark but was opposed by a third party claiming it is common to all Kiwis.

“It has just come into law in the last couple of weeks,” Holmes told the INTA Daily News. “It basically means if you ever use this haka commercially you must attribute ownership to the Ngati Toa so it is a form of legislation specifically designed to address IP rights. But it is a little bit toothless because it doesn’t give them any mandatory licensing so there is no money involved. It is a good common-sense solution to what is a difficult area of law.”

Today’s sessions, starting at 8:00 am in Room S427, will cover Africa, Independent States of the Former Soviet Union and Eastern Europe, Central America, Treaties, INTA’s Online Databases, UDRP and Internet Issues, ASEAN and Famous Trademarks. There will also be a review and Q&A.

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