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Major changes to Canada’s IP regime

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Major changes to Canada’s IP regime: What every business needs to know about protecting and enforcing trademarks and copyrights.

Dentons' Rob McDonald presentation from the IP Talks event, which took place at the Dentons Vancouver office on May 27, 2015.

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Major changes to Canada’s IP regime

  1. 1. Major changes to Canada’s IP regime What every business needs to know about protecting and enforcing trademarks and copyrights. Rob McDonald, Q.C. Partner Canadian and US Trademark Agent Chair, Canada region Intellectual Property Group 27 May 2015
  2. 2. Trade-mark protection and enforcement in Canada 1. Trademarks Act 2. Registered Trademarks 3. Unregistered Trademarks (common law rights) 4. Corporate Names and Trade Names
  3. 3. Basis of registration 1. Use in Canada (s. 16(1)) • date of first use • wares (commercial sale) v. services (advertisement) 2. Making known in Canada (s . 16(1)) 3. Marks registered and used abroad (s. 16(2)) 4. Proposed use (s. 16(3)) 5. Claiming Paris Convention Priority (s.34)
  4. 4. Specific Canadian issues 1. Concurrent use of confusing marks (s. 21(1)) 2. Non-entitlement if confusing with previously used trademark, previously filed trade-mark or previously used trade name 3. Invalidity proceedings (s.18) 4. Five Year Incontestability Rules (s. 17(2)) 5. Expungement Proceedings (s.45) 6. Licensing issues and deemed control (s. 50(2)) • Public notice of: • The fact that the use is a licensed use; and • The identity of the owner 7. Protection of famous brands in Canada
  5. 5. Enforcing your brand 1. Infringement proceedings for registered marks (s. 20) 2. Passing off proceedings for unregistered marks 3. Depreciation of goodwill (s. 22) 4. Grey market goods and parallel importation • Using copyright registrations to create alternative remedy 5. Opposition proceedings (s. 38) 6. Avoiding loss of trademark rights • Maintain use • Maintain distinctiveness • Maintain control • Maintain consistency of the brand • Ensure application is filed with accurate information
  6. 6. The Copyright Modernization Act 10 June 2015 Canada’s new copyright regime 6
  7. 7. BILL C - 11 • An Act to amend the Copyright Act (also known as the Copyright Modernization Act) (“CMA”) • Introduced September 29, 2011 • Received royal assent – June 29, 2012 • Entered into force on – November 7, 2012 • Notice and Notice Regime for ISP’s to come into force January 2, 2015.
  8. 8. Purpose of Copyright Modernization Act • Updating legislation to deal with new technology • Aligning Canada’s legislation with international treaties • Clarify Internet Service Provider liability • Permit businesses, educators, students and libraries to make greater use of copyright material in digital form • Revise legislative provisions to be technology neutral • No substantial amendments since 1997
  9. 9. Anti-Circumvention provisions (s.41 - 41.27) • Circumvention of technological protection measures (“TPM’s”) used by rights holders to secure and control their digital content, is prohibited • TPM (or digital lock) circumvention is considered copyright infringement (passwords, encryption software, access codes) • Persons who manufacture, market or distribute TPM circumvention tools such as digital lock cracking software, or who set up services to enable infringement, will be subject to civil and criminal sanctions • Exception for unlocking cell phones (“radio apparatus”) • These provisions apply to all TPM circumvention, even for personal use
  10. 10. Internet service providers (ISP’s) (s.31.1) • No infringement simply by providing the means for telecommunication and reproduction • The CMA establishes a “notice and notice” scheme for ISP’s and search engines (s. 41.25 – 41.27) – delayed coming into force until January 2, 2015 • ISP’s and search engines have only limited liability for copyright infringement committed by their subscribers. • ISP’s and search engines will have to forward any notices received of claimed infringement to the alleged infringer and maintain records relating to the alleged infringer’s identity • It is now copyright infringement to provide a service over the internet or otherwise that is designed to enable acts of copyright infringement
  11. 11. Fair dealing (s.29) • Fair dealing has always been an exemption under the previous Copyright Act (research, private study, criticism, review) • Permitted fair dealing purposes have been expanded under the CMA to include education, parody and satire • Dealings with copyright works must still be considered “fair”. 6 step test: • purpose, character and amount of the dealing; • alternatives to the dealing; • Nature of the work; and • Effect of the dealing on the work
  12. 12. User generated content (YouTube clause s. 29.21) • Users now permitted to create their own content by combining or using existing copyright material, provided certain conditions are met • The purpose of the user generated content must be non-commercial, the source must be mentioned (where reasonable), and there must not be any substantial adverse impact on the copyright holder’s exploitation of the work • Individual must have reasonable grounds to believe the source material was not infringing copyright
  13. 13. Copying for private purposes • Format shifting (s. 29.22) time shifting, (s. 29.23) and backup copies (s. 29.24) • Under the previous Copyright Act, format shifting and time shifting were unlawful, and constituted copyright infringement • The CMA makes it lawful to make copies for private purposes • The exception is only available if the source material is not infringing, it was legally obtained, and a TPM has not been circumvented • Cannot copy borrowed or rented works, cannot give away, sell or rent the copy
  14. 14. Statutory damages (s. 38.1) • The previous Copyright Act allowed a copyright owner to seek statutory damages between $500.00 and $20,000.00 for each work infringed • The CMA reduces the statutory damages to a range of between $100.00 and $5,000.00 where the copyright infringement is relating to an individual who has infringed copyright for private use (one time payment for ALL infringements) • Statutory damages for infringement for commercial purposes are still between $500.00 and $20,000.00 for each work infringed.
  15. 15. Photographers (s. 10 and s. 13(2) repealed) • Under the old Copyright Act, the person who commissioned a photograph was considered the original owner of copyright • Under the CMA, the photographer will become the first owner of copyright in their photographs, regardless of whether or not the works were commissioned • Individuals who commissioned works will have rights of personal and non-commercial use unless there is an agreement to the contrary
  16. 16. Other amendments • New Moral Rights for Performers (s. 17.1 and 17.2) • used to only exist for authors • New Making Available and Distribution Rights (s. 15 and s. 18) • Making works and performer’s performances available by telecommunication and distribution • Removal or alteration of Rights Management Information (RMI) prohibited (s. 41.22) • ie. water marks and notices • New Educational Institution exceptions (s. 29.4 and s. 30.1) • Use of publicly available internet materials, digital delivery of course materials • Review of CMA every 5 years (s. 92)
  17. 17. Conclusion • The Copyright Modernization Act represents a significant revision to existing Canadian copyright legislation • The CMA attempts to balance the rights of both creators and users, brings Canada’s legislative regime more in line with international standards, makes Canada’s copyright legislation technologically neutral, and addresses the realities of new technologies on the protection and enforcement of copyright
  18. 18. Bill C-31 10 June 2015 Economic Action Plan 2014 Act, No. 1 18 (Full Name: “An Act to Implement Certain Provisions of the Budget tabled in Parliament on February 11, 2014 and other Measures”)
  19. 19. BILL C-31 • Received Royal Assent on June 19, 2014 • Contains significant amendments to the Trademarks Act • Introduced without consultation and passed despite serious concerns over potential impact • Not yet in force • Discussion Document regarding amendments to the Regulations of the Trademarks Act • Response by IP practitioners to Discussion Document
  20. 20. Removal of “use” as a requirement for registration • Changes fundamental requirement of “use” under Canadian law • Prior applications based on proposed use • Could not proceed to registration until use claimed and Declaration of Use filed • Prior applications based on use • Date of first use had to be specified in application • New applications will no longer contain indication of use of mark or date of first use • Applicant will be able to file and obtain registration without ever having used the mark anywhere in the world • Prior use of a mark will still give trade-mark owner priority over subsequent users, so the concept of use is still intact in determining rights
  21. 21. Impact of new provisions • Applications will be filed without legitimate business interest • Increase in trademark squatters and pirates • Legitimate trademark owners will have to litigate to defend their marks • Increased clearance and searching procedures • “First to file” will be of critical importance • Potential increase in litigation based on priority rights • File now before Regulations come into force • Discussion Document response recommends amendments to proposed Regulations • Voluntary Statements of Use provide rebuttable presumption of use in opposition proceedings • Proactive use of s.45 to address abuse – mandatory expungement notices by Trademarks Office
  22. 22. Implementation of international classification (nice) system • Prior Regime: • No requirement in Canada to classify goods and services • Unlimited range of goods and services, one application fee • Claim very broad descriptions and increase scope of protection without paying additional fees • New Regime: • Implementation of Nice International Classification System • Requirement to separate descriptions of goods and services into specific Classes • Additional fee for each class
  23. 23. Renewal period • Prior Regime: • Trademark registrations must be renewed every 15 years • New Regime: • Revisions will reduce the renewal period to 10 years • For existing registrations, obtain early renewal before changes come into effect • File application now, if it proceeds prior to changes taking effect, the renewal period will remain 15 years.
  24. 24. Colour and sound marks • Prior Regime: • Under current Trademarks Act, not necessary to prove colour or sound mark has acquired distinctiveness to obtain registration • New Regime: • Owners of colour or sound marks should file now before more stringent requirements relating to proving distinctiveness become law
  25. 25. Madrid protocol • Current Regime: • No ability to file International trademark applications • New Regime: • Will allow Canada to conform with Madrid Protocol • International trademark filing system will allow trademark owners to file internationally • Will be possible to file an international Madrid Protocol application based on Canadian application or registration • Will be delayed until at least 2015
  26. 26. Trademark portfolio review • Carefully review trademark portfolio • Consult with trademark professionals to ensure full protection in Canada prior to amendments • File early to obtain filing priority over applicants who file applications after requirement of use is removed • May avoid costly opposition proceedings and litigation • Unlimited descriptions of goods and services • Avoid increased fees • Take advantage of early renewals
  27. 27. Questions 10 June 2015 27
  28. 28. Thank you 10 June 2015 Rob McDonald, Q.C. Partner Canadian and U.S. Trade-mark Agent Canada region chair, Intellectual Property Group P 1 780 423 7305 E rob.mcdonald@dentons.com Rob McDonald is a partner at the Edmonton office of Dentons Canada LLP, chair of Dentons' National Intellectual Property Group and member of Dentons' National Technology Transactions Group, Franchising Group, and Technology, Media and Telecommunications (TMT) Sector Group. He practices primarily in the areas of intellectual property protection, licensing and litigation, with a focus on copyright, trade-mark, patent and confidential information issues. Rob has litigated copyright, trade-mark, and patent infringement actions at various court levels and advises clients with respect to all aspects of the protection, licensing, exploitation and enforcement of their intellectual property and technology. He also has litigation experience in the areas of domain name disputes, franchise disputes, counterfeit goods and misappropriation of confidential information and trade secrets. Rob provides IP support with respect to mergers and acquisitions, cross border and international business, financing and other commercial transactions, including conducting due diligence on IP portfolios, analysing ownership and validity issues, and assessing the strength and breadth of trade-mark and patent registrations. Rob represents a broad range of clients worldwide in a variety of industries, including media and entertainment, telecommunications, oil and gas, energy, retail, luxury brands, finance, computer technology and life sciences. He has significant experience with respect to copyright collectives, having acted as legal counsel for the Society of Composers Authors and Music Publishers of Canada (SOCAN) and having served as a director of Access Copyright (formerly CANCOPY). Such work has included hearings before the Copyright Board and the negotiation of tariffs, royalty rates and structures. Rob received a LL.B. in 1988 from the University of Alberta and was called to the Alberta Bar in 1989. Rob is a registered trade- mark agent in both Canada and the United States, manages many IP portfolios and brands for clients, and is an experienced arbitrator and mediator of IP disputes. Rob is recommended by numerous publications including The Best Lawyers in Canada, 2009–2015,The Canadian Legal Lexpert Directory 2010–2015, and The National Post, and is recognized as one of Canada’s leading lawyers in the area of IP law (Trade- marks). He is a member of several professional organizations including the International Trademark Association, the Intellectual Property Institute of Canada (Fellow) and the Licensing Executives Society (Co-chair, Edmonton Chapter). Rob is also a sessional instructor of the IP Law Course at the University of Alberta Faculty Of Law. He has taught this course since 1990 and has delivered IP lectures to the Faculties of Law at Oxford University and Cambridge University as a visiting professor. 28