Following the Signs: New Directions in Trademark Law is a one-day symposium that will be hosted at the University of Ottawa on May 8th, 2017.
The overall goal of the symposium is to explore the impact and implications of recent amendments to the Trade-marks Act that will take effect in early 2018, and to identify and assess new challenges and new directions for trademark law.
In 2014 the Canadian Trade-marks Act received its first substantial set of amendments since its major overhaul and revision in 1953. While the 1953 amendments were aimed at bringing Canada’s trademark law into the modern age, it is fair to say that this most recent round of amendments aims to bring Canada’s trademark law into the global arena. The 2014 amendments were contained in two separate bills. One set of amendments ultimately became the Combating Counterfeit Products Act (CCPA). These amendments were directed towards strengthening the Trade-marks Act to address a rise in the global movement of counterfeit goods. A second set of amendments to the Trade-marks Act was included in the government’s omnibus bill the Economic Action Plan (2014) Act (EAP (2014) Act). These amendments will significantly overhaul the process for registration and administration of trademarks. Their goal is to bring Canada into line with its commitments under the Singapore Treaty and the Madrid Protocol. Most notably, these latter amendments will substantially expand protection for geographical indications in Canada. Some of the EAP (2014) Act amendments aim to modernize the Trade-marks Act similar to those tackled in certain of the CCPA amendments. However, influenced by different treaty obligations, the EAP (2014) Act resolves these issues in different ways. The result has been a confusing set of sometimes conflicting amendments. Although both bills have now been passed into law, only the anti-counterfeiting provisions of the CCPA are currently in effect. The EAP (2014) Act amendments are awaiting the drafting of a complex set of regulations designed to flesh out and implement the changes. These should be ready for comment in 2017 and coming into effect is anticipated in 2018. The result will be a complex web of changes that are both substantive and technical. Their full impact has yet to be felt or even properly understood.
In the words of Justice Binnie of the Supreme Court of Canada,
the purpose of trade-marks is to function as a symbol of the source and quality of wares and services, to distinguish those of the merchant from those of another, and thereby to prevent ‘confusion’ in the marketplace.” (Veuve Clicquot, para 18).
The law protects the rights of trademark holders while at the same time serving an important consumer protection function. The statute is a core piece of intellectual property legislation in Canada and its major overhaul is reason enough to hold a symposium that explores the scope and impact of these changes from diverse perspectives. The fact that a substantial number of the amendments were pushed through in an omnibus statute that received little or no debate or consideration in committee provides further impetus for such consideration.
In addition to exploring issues that will have a major impact on Canadian law, the changes to the Trade-marks Act will explicitly alter Canada’s approach to trademark law issues at a global level. Our panelists are sensitive to the global and comparative law dimensions and will bring these important perspectives to bear in their presentations.
Our symposium will be structured around three themes, each of which addresses a major change in the legislation that will have broad impacts on trademark law in Canada. Our themes are: the shift from a use to registration as a basis for trademark protection; the protection for new kinds and categories of geographical indications; and the expanding scope of trademark protection.
This content has been updated on March 8, 2017 at 11:08 AM.