The Power of Perspectives

The Canadian Bar Association

Kim Covert

C-86: Trademark, copyright amendments need work

December 4 2018 4 December 2018

 

Bill C-86, the omnibus Budget Implementation Act, 2018, No. 2, is an important piece of legislation making speedy progress through Parliament despite its size and many varied component parts.

The CBA’s Intellectual Property Section recently commented on several of those parts, the proposed amendments to the Trade-marks Act and to the Copyright Act and proposed framework for a College of Patent and Trademark Agents.

For the most part, the Section approves of the proposed amendments to the Copyright Act, particularly changes to Copyright Board procedures. That said, it does see a few of the proposals as more problematic: for example, as proposed, amendments to harmonize and streamline tariff proceedings would have unintended negative consequence by excluding collectives that deal in sound recordings from eligibility for statutory damages. “We believe the government’s intent is to maintain the status quo for the election of statutory damages, and that this is a drafting error and an unintended consequence.”

Likewise, a subsection proposed for the Copyright Act prohibiting enforcement against anyone who has paid or offered to pay the royalties that are included in a proposed tariff, even where no tariff has been approved, “is a departure from the status quo,” which applies only where there is an approved tariff. “The consequences of this change could be immense,” the Section writes, recommending that it be struck from the legislation, or amended to make clear that the user must actually pay the proposed rates.

The Section had criticisms on several of the proposed amendments to the Trade-marks Act, including:

  • Prohibited marks – These proposed amendments are a step in the right direction, but don’t go far enough, the Section says.
  • Bad faith – The proposed amendments add “bad faith” as a grounds for invalidity and opposition, without providing a definition of “bad faith.”
  • Awarding costs in oppositions – An amendment providing for costs to the opposition in section 38 will make it increasingly expensive for brand owners to protect their rights under the Act.
  • Awarding costs – This amendment allows for an award of costs in the procedure requiring evidence of use. “The burden of advancing this objective is already on registrants or other interested parties. It is unfair to add the additional burden of exposure to costs.”

The Section also commented on the proposal within Bill C-86 to create a College of Patent Agents and Trademark Agents, noting that such a body has been the focus of policy discussions and consultations for some time.

“The CBA Section has supported the development of a self-regulation model for IP agents so long as it includes appropriate regulatory objectives and a governing body with appropriate accountability, and addresses potential conflicts between overlapping regulatory regimes for lawyer agents,” the Section writes, adding, “It is premature to assess whether the proposed College meets these criteria, as significant aspects of the regime remain to be developed through regulation and bylaws. We encourage robust public consultation as these evolve.”

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