Canada may require new trademark legislation based on the Trans-Pacific Partnership Agreement (TPP), although TPP will not dramatically alter Canada's trademark landscape.
On November 5, 2015, after more than 5 years of negotiation, 12 nations: Australia, Brunei Darussalam, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, the United States of America and Vietnam, published the TPP, which has not yet been ratified by any of these nations.
Canada's Department of Foreign Affairs, Trade and Development had published a straightforward "Technical Summary of Negotiated Outcomes: Intellectual Property Chapter" (Technical Summary) on October 1st, 2015.
In respect of trademarks and geographical indications (GIs), the Technical Summary stated that the TPP:
- Provides protection against infringing use of trademarks, such as brand names and symbols;
- Fosters transparent and efficient rules and procedures across the TPP region;
- Is in line with Canada's existing regime;
- Supports Canada's progress to accede to the Madrid Protocol and Nice Agreement; and
- Includes rules to promote transparent and fair administrative systems for the protection of geographical indications.
- These include rules on opposition to and cancellation of future geographical indications.
That TPP “Is in line with Canada's existing regime” is true on its face, with TPP breaking no new ground in trademark protection in Canada. Nonetheless, many of the IP Chapter's terms in respect of trademark law suggest legislative amendments will be forthcoming if Canada ratifies TPP.
This paper addresses the IP Chapter in respect of trademark obligations, with the exception of overlap in respect of domain names and plant variety rights. It also excludes the Chapter's Enforcement Provisions for civil, criminal and border measures. The Enforcement provisions merit independent review in light of criminal and border measures brought into force in Canada on January 1, 2015.
References to “Article” and “Section” are references to Articles in the TPP IP Chapter and Sections in the Canadian Trademarks Act (TMA). References to “Party” or “Parties” are references to TPP participating nations. Reference to “Parliament” is reference to the Parliament of Canada, while reference to ”CIPO” is reference to the Canadian Intellectual Property Office.
It should be noted that references to Canada's Ministry of Industry are references to the current name of that Ministry, which will change to the “Ministry of Innovation, Science and Economic Development”, possibly before the end of 2015.
Canada's Existing Trademarks Act Including Provisions Not Yet In Force
The TMA regulates both registered and common law trademark rights in Canada.
Amendments to the TMA made in 2014 are not expected to come into force until 2018, together with changes to the regulations which accompany the TMA. The amendments will include accession to three international trademark agreements required by Article 18.7(2) of TPP namely, the Singapore Treaty on the Law of Trademarks, the Protocol relating to the Madrid Agreement concerning the International Registration of Marksand the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.
The impact of these international trademark agreements will be significant including broadening the definition of what can constitute a trademark, eliminating trademark application filing bases in Canada, tightening the pacing and structure of opposition and cancellation proceedings, shortening renewal terms and allowing for examination of a mark as to inherent distinctiveness.
Possible Legislative Imperatives For Canada
Article 18.3 allows for “appropriate measures… consistent with the provisions…” of the IP Chapter “… to prevent the abuse of intellectual property rights by right holders or the resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology”.
Article 18.5 makes implementation of the IP Chapter mandatory, albeit by “… the appropriate method of implementing the provisions of this Chapter within its own legal system and practice”.
What might be considered objectionable under Article 18.3 may unfold over time, however, TPP accents geographic indications, well-known marks, country names, traditional knowledge (TK), certification and collective mark rights, exhaustion of rights and matters in the public domain.
These points of emphasis give insight into Article 18.5 legislative imperatives for Canada. Currently, they are addressed minimally or not at all, or at most by inference in the TMA including with regard to the provisions expected to come into force in 2018.
1. Well-Known Marks
The TMA makes no specific provision for what are known in other jurisdictions as ‘famous' or ‘well-known' trademarks, which could include anything and everything from the names of popular artists or athletes to internationally recognized product brand names to the logos for famous sporting events.
Such marks could arise in many forms including words, logos, slogans, personal names or images and as memorable sounds or musical phrases.
In Canada, “fame” is most easily evidenced for the purposes of trademark registration or enforcement through extensive use in Canada. Reputation acquired with or without use in Canada may, however, also be sufficient to establish “fame”.
TPP does not require statutory protection or definition of well-known trademarks. Article 18.22 does, however, require that a Party meet two standards and consider adopting a third:
- Article 18.22(2) requires application of Article 6bis of the Paris Convention (an international trademark treaty to which Canada is a signatory).
- Subject to certain time limitations, Article 6bis requires the capacity to refuse or cancel a registration and prohibit use of a mark where that mark is liable to create confusion with a mark already made well-known in the country of the proceedings (in this case, Canada), by someone entitled to the benefits of the Paris Convention and whether or not the well-known mark is registered.
- Article 18.22(2) requires that there be “appropriate measures to refuse the application or cancel the registration and prohibit the use of trademark that is identical or similar to a well-known trademark, for identical or similar goods or services, if the use of that trade for identical or similar goods or services, where confusion with the prior well known mark is likely”.
- The difference between Article 18.22(2) and reliance on Article 6bis of the Paris Convention are that under Article 18.22(2):
- a complaining party need not originate in a country that adheres to the Paris Convention; and
- there is no requirement that the well-known mark enjoy its fame in the country where the complaint arises, in this case Canada.
- Article 18.22(4) includes the option of providing that the Article 18.22(2) measures apply where use of a mark confusing with a well-known mark is likely to deceive.
Success in Canadian proceedings contesting a likelihood of confusion between trademarks is not dependent on whether a trademark is well-known, whether the mark of the complaining party is in use in Canada or whether the complaining party originates in a Paris Convention country.
Canadian courts and the Registrar of Trademarks also take unusual or market-specific circumstances into consideration where evidence merits an individual approach.
For example, in 1994 the Trial Division of the Federal Court of Canada gave recognition to the non-statutory concept of “a family of trademarks” whereby common ownership of multiple Canadian trademark registrations for like goods or services where the trademarks share a common, distinctive element, can form a basis of opposition.
As another example, the importance of reputation has come into focus, to be claimed or disputed, in opposition and before the courts, most often in the case of parties seeking to enforce common law rights in the absence of a trademark registration or current use in Canada. There is no statutory definition of reputation, which allows parties the freedom to argue facts based on evidence in the marketplace.
Arguably the existing language of the TMA covering opposition, cancellation, infringement and passing off is broad enough to cover the intention of Article 18.22. However, given the direct language of Article 18.22, it appears that Canada may need to legislatively define and protect well-known trademarks in the TMA.
2. Country Names
The TMA currently includes nothing equivalent to Article 18.29 which requires that parties “provide the legal means for interested persons to prevent commercial use of the country name of a Party in relation to a good in a manner that misleads consumers as to the origin of the good”.
Provisions within the Paris Convention and the TMA may, however, suffice:
- Section 7(d)(ii) which prohibits use in association with goods or service of “any description that is false in material aspect and likely to mislead the public as to geographical origin”;
- Various prohibitions in Section 9 which prohibit adoption of words, symbols or various types of insignia and heraldic features which could suggest their use is approved by a relevant authority;
- On its website, and without specifying a provision, Canada's Department of Heritage, with reference to the Federal Identity Program of the Treasury Board of Canada Secretariat, identifies the TMA as protecting use of the word CANADA;
- Also on its website, the Department of Heritage states that as a signatory to the Paris Convention, Canada provides reciprocal protection for the country names of other signatories and expects the same protection for the name Canada in Convention countries;
- Section 9(1)(j) which prohibits adoption of “any scandalous, obscene or immoral word or device”;
- Section 10 which prohibits the adoption as a trademark or by use in a way that is likely to mislead, any mark which by ordinary and bona fide commercial use has become recognized in Canada as designating, among other factors, destination or place of origin of any goods or services;
- Sections 11 and 11.1 which prohibit use of various marks and denominations which can be used solely by those recognized as rightful owners of those marks and denominations.
Any of these provisions could be used in combination with opposition or invalidity proceedings, in the case of objectionable marks that may be the subject of trademark applications or registrations, respectively.
Each of these provisions may or may not be too restrictive to offer the open-ended protection suggested by the language of Article 18.29, meaning that Parliament would need to assess whether additional legislative language is required.
3. Geographical Indications (GI)
A GI is used to denote the specific geographic place of origin for a product which has become known for traits or qualities arising from state-sanctioned set means of production local to that place of origin.
Under Article 18.30 Parties recognize that geographical indications may be protected under a trademark statute or by other legal means.
Sections 11.11 and 11.12 cover listing, protection and cancellation of geographical indications in Canada for a brief list of wines and spirits and provide limited terms of objection to requests for GIs for additional wines and spirits.
TPP speaks in language that implies that there can be both “recognition” and “protection” as separate states of being for a GI. Whether there is a deliberate intention to imply two different states of being is unclear. It may be the intention that recognition will suffice where a Party does not maintain a formal record of GIs.
It may appear that there are at least two steps in the process of attaining protection for a GI in Canada, however, that is likely due simply to the practicalities of achieving the end goal of the listing of a GI.
The Canada-European Union Comprehensive Economic and Trade Agreement (CETA) concluded in September of 2014, but not yet ratified, requires Canada to vastly extend the list of GIs covering agricultural products originating in various EU countries.
Listing the additional EU GIs required under CETA alone dictates amendments to Sections 11.11 and 11. CETA, however, does not speak to the practicalities of regulation of GIs in Canada, whereas TPP does.
The language of TPP in respect of GIs initially speaks in putative terms, that is, that parties recognize that geographic indications “may be protected”, but if they are protected, various requirements are imposed.
Traditionally GIs have protected agricultural products, wines, spirits and foodstuffs originating in “old world” countries. The TPP definition of “geographical indications” is limited to GIs for goods, with the nature of goods not defined, except in respect of certain specific provisions related to wines and spirits. This suggests that TPP members can be imaginative as to what constitutes GI subject matter for goods in their countries, which is ideal for a new-world TPP country like Canada.
Given that Canada only has limited language in place governing certain GIs, TPP would appear to impose a requirement for legislative change and an opportunity for GI recognition and protection in Canada, including clarifying what is meant by “recognition” as opposed to, or in conjunction with, “protection” of GIs in Canada.
Further, if Parliament does turn its attention to GIs, it should consider GIs for services and not merely goods. Examples might include GIs for tourism or product processing or production services.
Customary Terms as Geographic Indicators
Consideration must be given to “customary terms” because they come into play in respect of TPP GI objection and cancellation proceedings discussed further below.
Section 11.18(2) allows for the adoption, use or registration as a trademark or otherwise, in connection with a business, of an indication in respect of a wine or spirit where that indication:
- is identical with a term customary in common language in Canada as the common name for the wine or spirit; or
- is identical with a customary name of a grape variety existing in Canada on or before the day on which the Agreement establishing the Word Trade Organization (WTO) comes into force. (Note: Day of assent to WTO by Canada was December 15, 1994)
Accordingly, Canada already has familiarity with the concept of “customary terms”. However, TPP imposes a “customary term” test on “an individual component” of a “multi-component term that is protected” by a specific Party. That is, an individual component within a multi-component GI “shall not be protected… if that individual component” is a customary term for the good covered by the GI within that Party.
Objection Proceedings for Geographic Indications
Under the current administration of GIs in Canada, requests for GIs are made to and reviewed by Canada's Ministry of Agriculture and Agri-Food. If the GI criteria are met, Agriculture Canada will recommend that the Minister of Industry publish a statement proposing that the GI be entered on the list of GIs kept pursuant to Subsection 11.12(1) of the TMA.
The statement will be published in the Canada Gazette: Part I, in which the Government of Canada publishes new statutes, proposed regulations and sundry notices.
The Canada Gazette: Part I is not to be confused with the Canadian Trademarks Journal which is published every week by the Registrar of Trademarks and gives notice of the particulars of trademark applications and registrations amongst other things, but not notice of requests for listing of GIs.
The TMA currently allows objections based on only one ground: that the indication is not a geographical indication. The TMA is silent on what evidence might support that ground.
Article 18.32(1) appears to require that Canada add additional grounds of objection by “interested persons” based on likelihood of confusion with prior used, applied for or registered trademarks, or terms customary in the common language of a TPP country as the common word for the relevant good in the territory of that country.
It could be argued that the current TMA means of objecting to a request for indication as a GI in Canada for wines or spirits could include referencing prior use or registration as a trademark as a means of demonstrating that an indication is not a GI but this can only be inferred. It is not so stated in the TMA. Under TPP, those grounds of objection must be stated, if a Party protects GIs, as Canada does, meaning amendments to the TMA will be required.
Cancellation of Geographic Indicators
TMA currently allows Canada's agricultural Minister to remove an indication upon publication of a statement giving notice of that intended removal in the Canada Gazette: Part I. Additionally, with reference solely to GIs listed in TMA Sections 11.18(3 — repealed) and (4) covering various spirits, Governor in Council amendments can cause the addition or deletion of an indication for a wine or spirit in those sections. No indication is given as to what circumstances might give rise to removal of a GI listing.
TPP Article 18.32(2) requires members to provide procedures to allow “interested parties” to seek cancellation of a GI on grounds including but apparently not limited to those set out in Article 18.32(1) for objection proceedings as discussed above.
In both opposition and cancellation proceedings, Article 18.33 requires Party authorities “have the authority to take into account how consumers understand the term in the territory of that Party”. Means for making that determination “may include” reference to “competent sources such as dictionaries, newspapers and relevant websites” as well as “how the good referenced by the term in marketed and used in trade in the territory of that Party.”
The language of the TMA that addresses “customary terms” appears insufficient to meet the above TPP requirements, if for no other reason that CETA requires Canada to recognize GIs covering goods beyond wines and spirits. Additionally, however, TPP limits GIs to goods, but not any specific type of good reinforcing the idea that the current legislation is unworkable for the requirements of TPP.
Under the GI provisions, what defines an ‘interested' person or party, or persons or parties?
Who might constitute an “interested person”, an “interested party”, or “interested persons” or “interested parties” for the purpose of initiating objection or cancellation proceedings is not defined in TPP.
Section 2, which sets definitions under the TMA, states that, “person interested ”:
“includes any person who is affected or reasonably apprehends that he may be affected by any entry in the register, or by any act or omission or contemplated act or omission under or contrary to this Act, and includes the Attorney General of Canada.”
Agriculture Canada's website-based guidance currently allows for objection by “any interested party” to requests for GI status under the current TMA GI provisions.
Canadian trademark opposition case law provides that anyone can oppose a Canadian trademark application.
Equally there are no limitations on who can renew a trademark registration, or seek its cancellation by way of summary proceedings under Section 45 which focuses on the state of use of the mark in Canada during a material time period.
With TPP aligning GIs more closely with Canadian trademark law, public interest dictates that, the current definition of “person interested” in the TMA be the accepted definition for anyone envisioned within TPP to be an “interested person”, “interested party”, or “interested persons” or “interested parties” in respect of GI proceedings.
Translation and Transliteration of Geographic Indicators
Parliament will also need to bring attention to the issues of translation and transliteration of GIs.
Canada has two official languages, English and French, but much of the population is multi-lingual, blessed to speak languages beyond English and French.
The TMA prohibits adoption or use, in connection with a business, as a trademark or otherwise, a translation into any language of a Canadian-recognized wine or spirit GI for the purposes of using that translation in association with the GI protected wine or spirit.
Article 18.32(5) of the TPP requires objection proceedings be in place, including the grounds described above for any request for GI status, and for any request for GI status of a translation or transliteration of a GI already existing in a member country.
Date of Protection of a Geographical Indication
Article 18.35 grants protection for a GI no earlier than its filing date or the registration date.
Section 11.17 allows for a Canadian citizen or a permanent resident as defined under Canadian law, who has used a protected geographical indication in a continuous manner in relation to any business or commercial activity in respect of goods or services in good faith before April 1, 1994, or for at least 10 years before that date, to continue to use that indication in a similar manner without being subject to Section 11.14 and 11.15 prohibitions. Those sections prohibit adoption of an indication as a trademark or otherwise, in association with a business, a protected GI for wine or a spirit, or the translation of that GI into any language.
Whether there is conflict between Article 18.35 and Section 11.17 will be for Parliament to resolve.
Geographical Indications Subject to an Agreement other than TPP
Where a Party protects or recognizes a GI pursuant to an international agreement, involving either another Party or a Non-Party, the terms of TPP in respect of recognition, opposition and cancellation apply, unless they don't!
There are multiple escape hatches under Article 18.36 including:
- whether an agreement covering GIs already recognized or protected was
- concluded or agreed in principle before the date of conclusion or agreement in principle of TPP (which presumably was October 5, 2015);
- ratified by a Party prior to the date of ratification of TPP by that Party; or
- entered into force for a Party prior to the date of entry into force of TPP for that Party.
- an exception by choice not to apply opposition or cancellation proceedings in respect of GIs for wines and spirits;
- whether protection or recognition of a GI might cease.
However, where such agreements permit a new geographical indication, a Party is required to:
- Make information available to the public, by way of internet, that the Party is considering protection for an indication under terms of a specific agreement, including specifying any translations or transliterations and in the case of multi-component indications, whether protection for individual components is being contemplated, or if the components are to be disclaimed;
- Provide an opportunity for an “interested person” (again not defined) to “comment” (the form of which is not defined) “for a reasonable period of time” (undefined) before the term is protected or recognized;
- Inform other TPP Parties of the opportunity to comment.
Given that TPP does not restrict what goods can be the subject of a GI, it may be that one or more Canadian Ministries will have to publish guidance for recognition of GIs arising within international agreements to come.
Article 18.36 also requires that Parties make available guidance accessible to the general public sufficient to inform them of the procedures for protecting and recognizing GIs, to ascertain the status of requests for GI protection and recognition and to allow for meaningful opposition.
Currently, few members of the general public would even be aware of, let alone review the Canada Gazette: Part I, or even the Canadian Trademarks Journal.
Parliament will need to determine how information about GIs, including requests for listing and opportunity to oppose or cancel a listing should be brought to the attention of the public and by which Ministry.
4. Traditional Knowledge
According to the World Intellectual Property Office (WIPO), an accepted definition of Traditional Knowledge (TK) has not yet been agreed upon, however, WIPO describes TK as “knowledge, know-how, skills and practices that are developed, sustained and passed on from generation to generation within a community, often forming part of its cultural or spiritual identity”.
TK in turn encompasses Traditional Cultural Expressions (TCEs), described by WIPO as denoting “expressions of folklore” which can arise in forms including “music, dance, art, designs, names, signs and symbols, performances, ceremonies, architectural forms, handicrafts and narratives, or many other artistic or cultural expressions”.
There are not yet agreed-upon means for best practices of recording and protecting TCEs, however, given that TCEs appear in many forms analogous to matter which can be adopted as trademarks, such as words, symbols and images, there has been much study of how TCEs might be protected under existing or enhanced trademark legislation within individual countries, or whether new legislative models best suit their protection.
WIPO encompasses an active Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC) which WIPO describes as working “toward the development of an international legal instrument or instruments for the effective protection of traditional cultural expressions and traditional knowledge, and to address the intellectual property aspects of access to and benefit-sharing in genetic resources.” In short, it has been engaged in TK treaty-making negotiations for years.
The IP Chapter of TPP does not include a definition for TK or TCEs.
Article 18.16 entitled “Cooperation in the Area of Traditional Knowledge” contains scant content, all of it focused on the intersection of traditional knowledge association with genetic resources and intellectual property systems, which suggests a focus on patents, not trademarks.
The reference to “intellectual property systems” might be considered broad enough to include trademark protection regimes, regardless; the language of the Article would appear focused primarily if not solely on TK as it meets patent law.
TPP may not provide Parliament with an opportunity to address TK and TCEs in the context of trademark law. That opportunity may not arise until WIPO publishes the text of the TK treaty under negotiation. No date of publication date for a text has been given.
5. Collective Marks
Article 18.19 requires that members provide for collective marks and certification marks. Currently, the TMA provides for registration of certification marks, which serve the purpose of identifying goods or services that meet a standard defined by the owner of the certification mark.
Neither the TMA nor its amending legislation not yet in force provides for collective marks.
In some jurisdictions, including Canada, the owner of the certification mark cannot use the mark. Instead, the owner licenses others to use the mark for goods or services which meet a defined standard.
Collective marks can be owned by any group or body operating co-operatively and the mark may be used by the owner of the collective mark.
Generally there are two types of collective marks:
- A mark used by members of a collective organization to indicate membership in the collective and signify that their goods or services are different from the goods and services of those who do not belong to the collective. For example, members of a professional guild may use a collective mark to signify that they have certain job skills and non-guild members may not;
- A mark used by the collective itself to signal or publicize the interests of the collective. A typical example would be a trade union promoting the interests of its members.
Once-amended, the TMA will continue to disallow use of certification marks by their owner. Accordingly, it would appear that amending legislation may be required to add collective mark protection to the TMA.
Article 18.19 includes the sentence, “Each party shall also provide that signs that may serve as geographical indications are capable of protection under its trademark system.”
Footnote 10 of the Chapter indicates that this language is present to require TPP members to allow for registration of GIs in more than one way.
For example, a GI could be registered as a regular trademark, a certification or collective mark as well as, or perhaps as other than a GI, if its status as GI may not yet have been recognized in a particular TPP country.
Under current and amending Canadian trademark law, a party attempting to register a mark recognized as a GI in their native country but not recognized as a GI in Canada would need to take care in the choice of alternate protection sought under the TMA to ensure the best interests of the owner of the foreign GI are met.
The TMA requirement that a certification mark be in use in Canada prior to the filing of a trademark application effectively means that common law rights in that use are recognized.
Returning to TPP's language possibly separating recognition of a GI from its protection, it is interesting to consider whether use alone, in Canada, of matter that might be interpreted as a GI will give rise to recognition and/or protection for that matter as a GI, without it being listed as such.
Finally, the legislation amending the TMA allows for proposed use of a certification mark whereas under the current legislation a certification mark must be in use in Canada prior to the filing of an application for its registration . Where a GI is not yet in use in Canada and a party may seek its protection as a certification mark, this lack of requirement of use prior to filing will be beneficial.
6. Exhaustion of Rights
“Exhaustion of rights” is a legal doctrine sometimes known as the “first sale doctrine” which holds that once the source or a duly-authorized distributor of a product bearing an IP right has sold that product, any IP right in the product is said to be “exhausted”, that is, the owner of the IP right can no longer enforce that right against others.
Applied to trademarks, a simple example would be that a fashion designer offering a handbag under the brand name of a fashion house can prevent others not licensed to sell those handbags from copying the brand for use on the same and sometimes similar goods. However, the designer could not prevent an original purchaser of the handbag from reselling it, for example, on consignment, or even renting or leasing or otherwise making commercial use of the product, unless prevented from doing so in law.
Generally the exhaustion of rights doctrine applies to domestic marketplaces, including Canada, where the IP right is protected. Application of the doctrine can become less certain, however, where a party is trying to enforce an IP right in a country where that right is not or has not been protected.
In respect of the passing off or infringement of trademarks not yet in use or registered in Canada, a party with a claim to that mark elsewhere may be able to prevent unlicensed or other misuse of the mark in Canada, however, success in doing so would largely depend on an ability to establish a reputation in the mark in Canada for the relevant product, in the absence of use.
Succeeding in a complaint based solely on reputation can be very challenging and very expensive. Accordingly, the best way to prevent misuse of a trademark in Canada is to register it in Canada.
Under current law and going forward, however, registration can be insufficient to enforce or defend trademark rights if the mark is not continuously used in Canada.
Article 18.11 provides that nothing in the TPP IP Chapter prevents a member nation “from determining whether or under what conditions the exhaustion of intellectual property rights applies under its legal system”.
TPP would not appear to require Canada to legislate in respect of exhaustion of trademark rights.
7. Trademark IP Matters in the Public Domain
The phrase “matters in the public domain” most often arises in respect of patents and copyrights, where there may be reasons for the holder of rights in a patent or copyright to voluntarily place those rights in the public domain.
In Canada, the lapse or voluntary surrender of rights in a patent or copyright registration effectively places those IP rights in the public domain, however, there is no register or specific and legislated recordkeeping of IP rights in the public domain.
In respect of trademarks, Section 11.18 of the TMA may wander in the direction of the public domain. It provides an exception to the protection of a GI for a wine or spirit where the indication has ceased to be protected by the laws applicable to the WTO Member for which the indication was protected, in Canada, or that the GI has fallen into disuse in that Member's country.
Where the GI is no longer protected or used in that Member country, Section 11.18 allows for its adoption, use or registration as a trademark or otherwise in Canada.
Neither TPP nor the concept of “matters in the public domain” speaks to any pressing concerns in Canada with respect to trademarks.
8. Transparency of CIPO Records and Federal Court of Canada Trademark Decisions
TPP places particular emphasis on Parties making IP data accessible. For example, TPP states that member countries:
- “recognize the importance of a rich and accessible public domain” [Article 18.15(1)];
- “acknowledge the importance of… publicly accessible databases of registered intellectual property rights that assist in the identification of subject matter that has fallen into the public domain” [Article 18.15(2)];
- “recognize the relevance of intellectual property systems and traditional knowledge associated with genetic resources to each other, when that traditional knowledge is related to those intellectual property systems” [Article 18.16(1)]
- This would appear to speak primarily to the field of patents but the language is sufficiently open-ended that it could apply to IP collateral to patents such as TK in the form of TCE argued to be trademarks for genetic resources;
- “endeavour to cooperate through their respect agencies responsible for intellectual property, or other relevant institutions, to enhance the understanding of issues connected with traditional knowledge associated with genetic resources, and genetic resources.” [Article 18.16(2)]
- Note that genetic and TK associated with genetic resources are referred to, again suggesting that this language may have application outside the sphere of patents;
- Also, what might constitute “other relevant institutions” which might engage in cooperation over genetic resources and TK associated with genetic resources is undefined; and
- “recognize the importance of collecting and analyzing statistical data and other relevant information concerning intellectual property rights infringements as well as collecting information on best practices to prevent and combat infringements”.
The current TMA and its amending legislation are silent as to any trademark subject matter that may be considered to have fallen into the public domain and anything submitted to the Canadian Trademarks Office is public.
CIPO currently makes a certain amount of information and file content available on its website and much more information and material is available in its publicly accessible search-room in Gatineau, Québec. Decisions in opposition and cancellation proceedings are accessible on a CIPO-linked third-party website.
Transfers, corrections and amendments to applications and registrations are recorded on the Register, as are the specific outcomes and judgments issued by the Federal Courts of Canada.
Decisions issued by the Federal Courts have been accessible on the website for the Courts since about 1990. Older decisions are available in published and online texts available by subscription or third party voluntary online publication service.
In short, one way or another, trademark decisions issued by the Canadian Trademarks Office or the Federal Courts of Canada are publicly accessible.
CIPO is actively working to increase the amount of information publicly accessible online, which appears to be within the spirit of TPP. Accordingly, no legislation requiring such activity appears needed.
9. Identifying Trademarks in the Public Domain
The idea that trademark subject matter should be placed in the public domain and recorded on publicly accessible databases is curious and at odds with Canadian trademark law.
The fact that a trademark application is refused or a trademark registration (including for certification marks and distinguishing guise marks) is expunged or a public authority mark is invalidated or ordered unenforceable by a Canadian court is not proof that the underlying mark has been abandoned by its owner or could be interpreted as being “in the public domain”.
Common law rights arise in Canada by way of use of a trademark and, until proven otherwise, those rights are enforceable, regardless of whether a mark has been accepted for approval, publication or registration by the Registrar of Trademarks. Common law rights are not impacted merely by the rejection or abandonment of a trademark application, or the invalidation of, or failure to renew, a trademark registration.
Through a combination of a Register and Indexes, CIPO meets its TMA obligation to provide public access to records related to trademark applications and registrations, including applications that have been abandoned or refused and any judgments or ordered issued against registrations, including their cancellation.
Attempting to create a register of trademarks in the public domain would likely only lead to confusion, particularly for the general public.
The current Canadian trademark regime is heavily dependent on use of marks in Canada as a means of protecting rights in those marks, whether registered or not.
Even where a mark is not registrable, its owner may still enjoy enforceable rights arising through common law use. Indeed, that common law use may eventually lead to sufficient distinctiveness in a mark not otherwise registrable, to allow for registration.
The emphasis on use may change but it will not fall away under the amended TMA. Also, for at least a generation, if not longer, we will see use retain its pivotal role in enforcing or challenging rights in marks registered under the existing TMA because the law as it stood at the time of registration will apply to those registrations.
Trademark registrations can be renewed in Canada without proof of use and that will not change under the amended Act, although the term of renewal will change from 15 to 10 years. It follows that unless a registration lapses due to voluntary or forced cancellation, or lack of renewal, a Canadian trademark registration can exist indefinitely.
Provided a mark is used in Canada, whether registered or not, and in the case of registered marks the registration is renewed, a trademark owner will continue to enjoy rights, be they under the existing TMA or the amended TMA, unless those rights are invalidated.
More depends on the actions of a trademark owner than those of the Canadian Trademarks Office or the Canadian courts in ensuring a brand owner can sustain and deepen rights in a trademark.
While the reference to “publicly accessible databases of registered intellectual property that assist in identifying subject matter that has fallen into the public domain” may have import in respect of other IP rights, it is difficult to see a role for such a database in Canada in respect of trademarks.
It is even more difficult to see CIPO wanting to take on the surely thankless task of declaring a mark in the public domain, particularly at a moment in time when it is cheerfully embracing the expanding definition of what can constitute a trademark in the upcoming amendments to the TMA.
If there is a role for such a database in Canada, the tempestuous nature of trademark law would make it essential that the framework of the database be defined in the TMA, with actions to declare a mark in the public domain being voluntary and reversible, or contestable only before the Courts. That is, CIPO would be in the position or recording the decisions of others but not having to itself order marks into the public domain.
TPP does appear to require the attention of Parliament in respect of well-known trademarks, country names, geographical indications and collective marks. It is imperative that Parliament allow for timely and open consultation on any prospective legislative change. CIPO must also allow for adequate consultation on any administrative changes it is charged with making.
Consultation at both levels is essential to ensure that the practical nature of the TMA is not distorted to accommodate what may appear to be ‘new' practices or protections but which in fact the TMA and its regulations have already adequately protected before CIPO and the courts, for decades.
It must be remembered that amendments to the TMA and its regulations that will come into force, possibly in 2018, will also bring considerable change that should serve to broaden access to trademark protection in Canada.
Importantly, allowing for consultation on the trademark portion of the IP Chapter of TPP may provide an opportunity for consultation on other aspects of Canadian trademark law that have received little or no official consideration despite more than two decades of calls for attention.
At minimum, there are two matters which should be addressed.
First, imposing mandatory acceptance of co-existence agreements on CIPO would be a useful means of resolving confusion objections made by CIPO examiners during examination of trademark applications, where the parties themselves disagree with an examiner's position.
Second, a fresh look at the benefits and implications of Section 9 of the TMA, which prohibits adoption without consent, of marks consisting of or resembling “official marks” held by public authorities, would be salutary.
In consultation with the indigenous peoples of Canada as well as the Canadian public in general, Parliament could inquire into the merits of domestic protection for TK and TCE as may align with trademark protection, prior the release of a WIPO treaty text addressing Traditional Knowledge in the context of Intellectual.
As for exhaustion of trademark rights, and the idea of trademarks in the public domain, the less legislative or administrative attention to these odd concepts, the better off Canada will be.
In summary, the many years of TPP negotiation have resulted in little that will call for substantive change to Canadian trademark law. Any need to address the trademark aspects of TPP may, however, present an opportunity to explore longstanding vexations.