Law Times

Page 10 September 22, 2014 • Law Times www.lawtimesnews.com FOCUS mP looks to update official marks regime Private member's bill would clarify definition of public authority By arshy maNN Law Times private member's bill is looking to up- date Canada's official marks regime. "It all started when we had a call at my office from a constitu- ent who was a massage therapist," says Geoff Regan, Liberal MP for Halifax West, and the bill's spon- sor. "She had learned that she was suddenly unable to use a few phrases, including registered massage therapist, massage thera- pist, therapeutic massage, and the French translations of those words because back in 1999 the College of Massage Therapists of Ontario had obtained the official marks for all of those." Official marks are an aspect of trademark law that's unique to Canada. They allow public authorities to register marks that give them a much broader set of protections than for trademarks. Official marks don't have to actu- ally be in use and aren't subject to renewal or cancellation. A party can obtain them without refer- ence to any wares or services. "Once they're there, they're theoretically there forever and you can't get rid of them," says Scott MacKendrick, a partner at Bereskin & Parr LLP. In the case of the College of Massage Therapists of Ontar- io, it licensed its official marks to one of the two massage therapy associations in Nova Scotia. Regan's constituent be- longed to the other one. Regan says he found his constituent's situation per- verse. "The idea that a provincial body could be granted this right or privilege and be able to apply it across the country, it just made no sense to me." Regan found other ex- amples. He points to the case of Dave Gunning, a singer from Nova Scotia who self-published 2,000 copies of his album, No More Pennies, that has an image of a penny on the cover. The Royal Canadian Mint notified him af- ter he produced it that he needed to pay $1,200 for the rights to the penny image. "I thought that was rapacious," says Regan. "And I don't think that makes any sense at all that this mark should be used to gen- erate what is effectively commer- cial revenue." Regan worked with Teresa Scassa, who holds the Canada research chair in information law at the University of Otta- wa, and Andrea Slane, associ- ate professor at the University of Ontario Institute of Tech- nology, to draft his bill. If passed, bill C-611 would change many aspects of the of- ficial marks regime. First, it would clarify what constitutes a public author- ity under the Trademarks Act. Currently, a public authority can mean anything from the RCMP to a regional hunting association. Regan's bill would define public authorities as "a body that has a duty to act in the public interest and is under the significant control and supervi- sion of any level of government in Canada, to the degree that the government exercise ongoing inf luence over the body's gover- nance and decision-making." It would also allow only Cana- dian public authorities to register official marks. "You can have universities from Trinidad or Malaysia or the U.S. that get a mark in Canada, and if it conf licts with something that's been used here, well tough luck, they registered it first. That doesn't make sense," says Regan. Regan's bill would also intro- duce a host of restrictions on what sorts of marks someone could register as official marks. Official marks couldn't be ge- neric, overly similar to any exist- ing official marks or trademarks and would have to be in the "pub- lic interest." The bill would also provide a notice period and a process for objecting to registration. "Right now, there really isn't much," says Regan. "It's a very short period, and there isn't really a process for adju- dication or consideration. As long as it's a public authority that's ask- ing for it, they grant it." The bill would also require renewal of official marks after 10 years and provide a process for objecting to it. John Simpson, a trademark lawyer with Shift Law, thinks the official marks regime is badly in need of an overhaul. "Official marks right now op- erate sort of like a nuclear bomb in the trademarks process," he says. "I find quite a significant por- tion of the objections I see from the trademarks office to new applica- tions are based on official marks advertised by dubious public au- thorities, including cases where there is absolutely no evidence that that mark is in use or has been in use in recent memory." While some lawyers have ar- gued Canada should get rid of official marks altogether, Regan still thinks they have a place in the system. "I think that the intention of it initially was to protect important government symbols," he says. "But the official marks have be- come a tool for market distortion and for revenue." Simpson agrees that official marks can work given limited use. "There are certain kinds of publicly significant symbols that again should be protected from commercial exploitation," he says. "And in theory, that has some appeal because it preserves the integrity of what are called official marks. But it's only going to have a net benefit to the whole trade- marks regime if you really are able to narrow what constitutes a pub- lic authority." Regan hopes his bill will come up for debate before the next elec- tion. "What I'd like to see, frankly, is for the government to bring forward its own bill to do this," he says. If neither of those things hap- pens, Regan says he hopes to re- introduce the bill after the federal election. LT Subscribe today to the ultimate source for today's legal profession! Keep up-to-date and informed for only $75 a year. To order your copy visit www.canadianlawyermag.com or call 416.609.3800 or 1.800.387.5164 SUBSCRIBE TODAY AND RECEIVE: r JTTVFTDPOUBJOJOHVOCJBTFESFQPSUJOH BOEBOBMZTJTPG$BOBEBTMFHBMMBOETDBQF r '3&&FYDMVTJWFBDDFTTUPUIFCanadian Lawyer EJHJUBMFEJUJPOBOEEJHJUBMFEJUJPOBSDIJWFT r '3&&XFFLMZFOFXTMFUUFSm$BOBEJBO-FHBM/FXTXJSF FEJUFECZUIFTBNFFEJUPSTUIBUDSFBUFCanadian Lawyer FREE Digital edition included! Untitled-2 1 2014-09-16 9:16 AM A 'As long as it's a public authority that's asking for it, they grant it,' says Geoff Regan. commerce, then is that valid federal legislation?" she asks. Rowden points out a number of cases have established that trade names and unregistered trademarks are a form of property, something that would fall under provincial jurisdiction. "So now what you have done is to put a clash between the federally granted trademark right based on no use with a provincially identified head of power, namely a trademark or trade name that can only exist with use and is subject to the provincial heads of power," she says. Rowden suspects the constitutionality of the new regime could arise if one of the provinces chooses to challenge the legislation or as part of a defence in an infringement action based on a registration granted with- out use. "This topic has been discussed frequently enough that trademark practitioners throughout Canada are now well aware of it, so it will not be a surprise when this issue comes up in a defence to trademark in- fringement," she says. Despite its many f laws, the new regime does provide some advan- tages to trademark holders and applicants. "The big advantage that will come is the ability to get into the European and other foreign trademark systems at a cost that may be less than is the case right now," says Rowden. And Simpson says there's at least one aspect he's completely behind. "One thing that I think Canadian lawyers universally appreciate is changing 'trade-mark' to 'trademark,'" he says. LT Use requirement removed Continued from page 9

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