On June 24, 2016, amendments to the Trademarks Act and the Patent Act came into force granting statutory privilege to confidential communications between patent and trademark agents and their clients. Historically, communications between clients and their non-lawyer agents did not enjoy the same protection that was afforded to communications between clients and their lawyers.
Under the amendments, which are more-or-less the same under each Act, a communication will be subject to privilege if the communication:
- is between an individual whose name is included on the list of trade-mark agents or entered on the register of patent agents and that individual’s client;
- is intended to be confidential; and
- is made for the purpose of seeking or giving advice with respect to any matter relating to the protection of a trade-mark, geographical indication or certain prohibited marks; or, in the case of patents, any matter relating to the protection of an invention.
If these three conditions are met, the communication is privileged in the same way as a communication that is subject to solicitor-client privilege or, in civil law, to professional secrecy of advocates and notaries. Such communications are not required to be disclosed nor testimony given on them in civil, criminal or administrative actions or proceedings. Exceptions to solicitor-client privilege also apply to agent-client privilege, and privilege does not apply if it is expressly or implicitly waived by the client. The newly recognized privilege extends to communications between foreign trademark and patent agents and their clients if the communication would be privileged under the laws of the foreign agent’s jurisdiction and it meets the three criteria above (such that it would have been subject to privilege had the communication been made to a Canadian agent).
These new provisions are retroactive and apply to communications made before the amendments took effect if the communication was still confidential at that date. However, there is an exception to the retroactive application of this new provision whereby privilege “does not apply in respect of an action or proceeding commenced before [June 24, 2016]”. Given the broad language of this exception, presumably, this means that if an action or proceeding was commenced before June 24, 2016, any communications between the client and agent, whether made before or after the commencement of the proceedings are not covered by privilege regardless of when the communication is brought into issue. Alternatively, this exception could be interpreted to mean that, if an action or proceeding was commenced before June 24, 2016, any communications between the client and agent before that date are not subject to privilege, but communications between agent and client relating to the action made after June 24, 2016 would be subject to privilege.
In addition to the coming into force of these new provisions, on June 23, 2016, the Canadian Intellectual Property Office, together with Innovation, Science and Economic Development Canada, published a Revised Draft Interim Code of Conduct. The original draft code was published as part of consultations on a governance framework for intellectual property agents, and the consultation period ran from May 24, 2016 to June 13, 2016. Comments received during the consultation period were taken into consideration, and further submissions on the Revised Draft Interim Code will continue to be accepted until July 29, 2016.
Rules 2.1 to 2.11 of the Revised Draft Interim Code address confidentiality and are guided by the principle that “An agent has a duty to preserve the confidences and secrets of clients”. According to these rules, an agent must:
- hold all information concerning the business and affairs of the client acquired in the course of the professional relationship in strict confidence, and must not divulge such information unless such disclosure is expressly or impliedly authorized by the client, required by law, by order of a court, or otherwise permitted or required by this Code;
- exercise reasonable care to ensure the privacy and confidentiality of such confidential information;
- continue to hold the information in confidence after the conclusion of the matter or termination of the professional relationship;
- avoid participating in or commenting upon speculation concerning the client's affairs or business even if certain facts are public knowledge.
Where disclosure of the confidential information is required by law, the agent must not divulge more than is required. An agent may disclose confidential information in order to:
- secure legal or ethical advice about the agent's proposed conduct;
- defend against allegations that the agent or the agent’s employees committed a criminal offence involving the client’s affairs; are civilly liable with respect to a matter involving a client’s affairs; have committed acts of professional negligence; or have engaged in acts of professional misconduct;
- establish or collect the agent’s fees;
- to detect and resolve conflicts of interest arising from a change of employment or in the composition or ownership of a firm, but only if the information disclosed does not compromise any privileged communication between the agent and the client or otherwise prejudice the client;
- prevent death or harm when the agent believes of reasonable grounds that there is an imminent risk of death or serious bodily harm.
At this point, the Draft Code is intended as a provisional guidance document for agents in the exercise of their duties, including in the application of trademark and patent agent privilege. The full Revised Draft Interim Code can be found here.
Recognition of this statutory privilege and the creation of a code of conduct for agents facilitates more open communication between trademark and patent agents and their clients, who can now take more comfort in the privacy of their communications.