Talks

Keynote Address

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Professor David Vaver
“Towards a Distinctive Trademark Law for the 21st Century”

For some 60 years reforms to Canada’s Trade-marks Act of 1953 were few and far between. Major reforms then came in rush in 2014 and 2015, mainly in the form of an Anti-Counterfeiting Bill and more sweeping reforms in the Budget Bill of 2014. The reforms were partly inspired by the government’s desire to accede to international instruments such as the Singapore Trademark Treaty and the Madrid Protocol on International Registration. The amendments were rushed through with little parliamentary oversight and have sat around waiting to be proclaimed into force while subordinate legislation to fill in their gaps is being drafted. Both the process and substance of such law reform have been faulty. This paper will suggest it is time for trademark law to be rewritten in a more user-friendly way, and that it should be consciously framed as a coherent and integrated part of an intellectual property policy which fairly balances the rights of trademark owners and users in the public interest. Ways and means to achieve these goals will be suggested.

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PANEL
GEOGRAPHICAL INDICATIONS

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Ms. Renata Watkin
“Placing Canadian Geographical Indications on the Map”

Geographical indications (GIs) designate products that have a specific geographical origin and possess qualities or reputation attributed to that origin. In addition to signalling the origin and associated quality of agricultural products, GIs are effective tools for maintaining agricultural income, achieving rural and territorial development objectives and conserving biological resources. Moreover, they can play a significant role in highlighting local cultural specificity, which can promote wider economic and cultural benefits. The multifaceted nature of geographical indications poses several challenges to emerging GIs originating in Canada. GIs are signs included under the framework of the Trade-marks Act, which is federal legislation. In contrast, as rural and territorial development tools, GIs are under the sole jurisdiction of the provinces. To complicate matters further, as instruments of agricultural and environmental policy, GIs are under joint federal-provincial jurisdiction. In addition to these constitutional issues, there is a complex network of rules at the federal and provincial levels that protect GIs to varying degrees in Canada. This fragmented system of rules makes it difficult for producers of Canadian origin-specific foods and agricultural products to understand and take advantage of these protective mechanisms. Amidst this existing jurisdictional and legal complexity, a new instrument, “Protected Geographical Indication for Agricultural Products and Food” is soon to be added to this system with the forthcoming Parliamentary enactment of the Canada-European Union Comprehensive and Trade Agreement Implementation Act (Bill C-30). To the extent that the new amendments to the Trade-marks Act pertaining to GIs focus exclusively on the implementation of Canada’s international obligations without any consideration for consistency and harmonization of rules or appropriate federal-provincial coordination, endogenous geographical indications risk being left behind. This presentation will explore the ways in which the current legislative framework protects endogenous GIs, and will assess the proposed amendments under Bill C-30. The second aim is to examine how this currently fragmented system affects the development of endogenous GIs in Canada, using as a case study the first geographical indication for foodstuff in Canada, l’Agneau de Charlevoix (Charlevoix Lamb).  Finally, the presentation will explore possible solutions.

 

Dr. Marsha S. Cadogan
“The Game Changers to Geographical Indication Rules in the Global IP System and Its Impact on Canada”

Contentions over the breadth of geographical indication protection in domestic and international jurisdictions has created an unsettling air in international intellectual property and trade quarters based on clashes with conventional modes of protecting place-based goods. The paper discusses global trends in preferential free trade agreements to either promote the protection of non-wine and spirit geographical indications, or to dispel the imposition of these rights in domestic jurisdictions. The progression of geographical indications as modern, and a relevant form of intellectual property took up momentum in the mid 2000’s and has not lost its vigor, but instead, has created two international divergent perspectives, each with profound implications for domestic legislatures. Bilateral and regional agreements initiated by the European Union and Switzerland are discussed, as well the ramifications of extensive GI provisions in countries and regions such as Central America, Singapore, Japan, the Caribbean, and Canada. The United States divergent approach to geographical indications is well indicated in agreements such as Trans-Pacific Partnership Agreement and the United-States – Australia free trade Agreement. Amidst the non-multi-lateral trend to influence GI rules, is the Geneva Act of Lisbon Agreement on Geographical Indications and Appellations of Origins, recently amended to provide full based rights to all forms of geographical indications. Three distinct paths in the creation and dissemination of GI laws are therefore evident in international intellectual property law, leading to a haphazard development in the law. As a global player interacting with many of these consumer markets, the implications of these developments to Canada’s national intellectual property strategy and domestic markets are discussed.

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Mr. Jean-Philippe Mikus
“Geographical Indications : Appropriation and Reappropriation of Tradition in the Food Industry Through International Trade Agreements”

Mr. Jean-Philippe Mikus’ presentation will contrast the fundamental principles of trademark law with the very different logic that supports the protection of geographical indications. Trademarks law in Canada is largely a function of appropriation through trade and tied to the concept of confusion and is at odds with many aspects of geographical indications. Recent trade agreements, including the Comprehensive Economic and Trade Agreement with the European Union, establish a framework for the reappropriation of names associated with regional agricultural products that had acquired or lost trademark significance. In certain cases the coexistence of the appropriated and reappropriated will exist in Canada which poses conceptual challenges. Most trade agreements only recognize a subset of nationally recognized geographical indications, and the status of excluded geographical indications is uncertain. The presentation will look at borderline cases and how current and future rules will impact their adjudication by Canadian Courts, including in light of recent decisions by the Federal Court of Appeals in the MC Imports Inc. v. AFOD Ltd. (2016) and Lum v. Dr. Coby Cragg Inc. (2015) cases that have reshaped trademark protection for geographical names. This new set of rules will place constraints on the recognition of some geographical indications, local or foreign.

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PANEL
FROM USE TO REGISTRATION:  A PARADIGM SHIFT?

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Dr. Carys J. Craig and Dr. Bita Amani
“The Jus of Use: Trademarks in Transition”

Changes to Canada’s Trade-marks Act will soon permit the registration and enforcement of unused trademarks. Far from a legal technicality or a practical exigency, this shift fundamentally alters the nature of trademarks and the trademark system. Traditionally, use of trade indicia has determined title and acquisition of trademark rights, while also defining their scope; use (or its absence) has threatened acquired rights; and use has infringed rights. By virtue of the ‘Jus of use’, the trademark system has remained reasonably true to its rationale, encouraging and rewarding honest economic activity and fair competition. We argue that the statutory amendments will present stark practical problems that will likely disadvantage weaker commercial actors; they will also undermine the basic tenets of our trademark system, casting doubt on its historical justifications and its constitutional legitimacy. Further, the international trajectory of ‘trademarks in transition’ gives rise to an overarching concern: with the global shift towards a right-by-registration system, consumer protection rationales cede to market efficiency concerns, and the trademark further (d)evolves from source signifier to simple commodity.

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Dr. Florian Martin-Bariteau
“Disrupting the Myth of a Canadian Paradigm Shift”

The new amendments to the Trade-marks Act are generally presented as a paradigm shift from “use” to “registration”. The paper will evaluate the new provisions and discuss the upcoming changes regarding registration formalities. The paper will argue the new rules only reduce formalities; the exception of “proposed trademarks” simply becoming the rule. Moreover, the specific provisions regarding the “new signs” submit their registration to a burden of proof similar to the former system.

 

Mr. Robert A. MacDonald
“From ‘Use’ to Registration: A Practical Perspective”

Registration of a trademark gives to the owner an exclusive right to use the trademark across Canada.  Use of a trademark, either in Canada or another jurisdiction, has long been an essential requirement for registration of the trademark in Canada.  The amendments to the Trade-marks Act will remove the requirement for use prior to registration such that a trademark owner will be able to obtain and enforce the exclusive right without ever having used the mark. Needless to say, the amendments have generated considerable controversy in Canada.  Some have even questioned the constitutionality of the amendments.  This presentation will focus on some of the practical implications flowing from the amendments and will consider some of the steps that brand owners might take to properly position themselves for the implementation of the amendments.

 


PANEL
THE EXPANDING SCOPE OF TRADEMARK PROTECTION

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Ms. Susan J Haslip
“On the Reliance of Canada’s Trade-marks Act to (Meaningfully) Protect Identifiers of Relevance to Aboriginal People in Canada: Treading On Thin Ice(?)”

Trademark law is relied upon to protect corporate brands. The Government of Canada has been promoting the defensive protection provisions of Canada’s Trade-marks Act to preserve and protect Aboriginal culture and identity. While examples exist of such protection, quare the extent to which such provisions may be relied upon to meaningfully protect such identifiers. This presentation will provide examples of the use of various provisions of the Trade-marks Act to preserve and protect identifiers of meaning to Aboriginal peoples and will critically consider the extent to which the so-called ‘defensive protection provisions’ of Canadian trademark legislation may be said to meaningfully protect such identifiers.

 

Mr. Scott Miller
“When is Offensive, Too Offensive?”

The use of indigenous symbols and names for sports teams has become an increasingly contentious issue in Canadian (and American) trademark law. Justice Murray Sinclair has stated that, “it’s only indigenous peoples’ symbols that are being utilized by sports teams. I don’t think there is any cultural group that is subject to that anymore.” It is convincingly clear that the time has come to stop dehumanizing and objectifying indigenous people for the sake of trademarks in sports. A prominent Canadian example is that of the Nepean Redskins. In 2013, Ian Campeau, a band member from the Juno-winning music trio A Tribe Called Red, filed a human rights complaint and convinced the Nepean Redskins to change their name to the Nepean Eagles. Following suit, two Greater Toronto Area schools also changed their names and logos due to their offensive quality towards indigenous communities.

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Prof. Mistrale Goudreau
“Hashtags in the World of Trademarks”

Consumers are increasingly relying on social media websites to gather information about products and commercial services and as a result, companies are increasing their use of hashtags to market their products and services. It raises the question: can a hashtag be a trademark? According to the US Trademark Manual of Examining Procedure (abbreviated TMEP), a mark containing a hashtag is registrable if it functions as an identifier of source. And we now find registrations of marks containing (or consisting of) hashtags all around the world. But for some, a hashtag is a descriptive device of an online conversation, a tool allowing users to identify and search tweets, and therefore unregistrable as serving a utilitarian function. Hashtags are also used to communicate specific information between users, sometimes in extreme situations. They may be used to offer shelter to those caught up in terror attacks (like the #PorteOuverte hashtag) or to manifest solidarity. One of the most popular hashtag on Twitter was #JesuisCharlie, which was, in the days following the Charlie Hebdo attack in Paris, the subject of numerous trademark applications. It led the OHIM to publish a notice that the expression was devoid of distinctive character and its registration as a trademark would probably be contrary to public policy. When a hashtag has gained a cultural meaning, is associated with a particular event or issue, must it be considered part of the public domain, unavailable to trademark applicants ? And when such an expression gets registered, what is the scope of protection?  Can I use in a tweet the hashtag #Rio2016?

This content has been updated on October 12, 2017 at 10:35 AM.