Law Times

PAGE 12 FOCUS September 20, 2010 • Law timeS ACTA moving forward as more details released Parties aiming to finalize draft of controversial anti-counterfeiting deal this year BY JUDY VAN RHIJN For Law Times stem the criminal trade in bo- gus goods responded to calls for greater transparency with the release of a draft of the pro- posed anti-counterfeiting trade agreement in April ahead of talks aimed at fi nalizing a deal this month. In the meantime, there have A been two more rounds of nego- tiations, in Switzerland in July and Washington in August, during which the parties have attempted to reach consensus. Th e hope is to release the fi nal draft by the end of this year fol- lowing the meeting this month in Japan. Participants are aim- ing for an agreement that will provide international stan- dards for enforcing intellectual property rights. 'The laws in Canada for anti-coun- terfeiting of intellectual property are weak, especially with respect to border controls and Internet issues,' says Brian Isaac. Brian Isaac, a partner at Smart & Biggar/Fetherstonhaugh and chairman of the Canadian Anti- Counterfeiting Network, says the draft is a work in progress full of brackets outlining the various fter eight secret meet- ings, delegates of the 36 countries trying to possibilities. So far, his organi- zation is generally supportive of it. "Th e laws in Canada for anti-counterfeiting of intellec- tual property are weak, especially with respect to border controls and Internet issues," he says. "Th e interface between these ne- gotiations and our weak domes- tic laws is very interesting. What we're hoping to see is a pragmatic minimum set of rules that is ef- fective in addressing the increas- ing problem of piracy." Mark Davis of Heenan Blai- kie LLP believes the draft is fair to a large extent and that there will be a benefi t for Canadian intellectual property owners if our system incorporates the protections in the agreement, also known as ACTA. "ACTA is very broad because it has tried to address all aspects of counterfeit- ing and piracy," he says. "Th ey have thrown in digital issues, hoping for a regime to stop the sale and distribution of pirated products over the Internet." Nevertheless, Davis believes Canada already has a mature body of law dealing with en- forcement issues and sees a pos- sible inconsistency with ACTA's approach. "It's strange that there is a distinction between wilful infringement and innocent in- fringement," he says. "Th e Ca- nadian jurisprudence is pretty unequivocal that you don't need to know that you're infringing a patent or a trademark. Th ere is no defence of innocence in Canada except in very narrow circumstances." Th e ACTA provision refers to "an infringer (who knowing- ly or with reasonable grounds to know) engaged in (infring- ing activity)," which Davis says will mean that in practice, un- less authorities have proof of wilful infringement, a suspect is essentially not liable for a fi rst off ence. "Th e fi rst one's free, particularly if the onus is on the IP owner to prove the motivation of the infringer." As a result, Davis sees the agreement as aiming at dealing with people who have estab- lished a business to avoid the law. "It is not dealing with a le- gitimate competitor with a bona fi de mistaken belief in the legiti- macy of the product," he says. For his part, Isaac believes the treaty may also boost calls for more robust border protec- tion mechanisms. "At present, we have a very diff erent regime to stop infringing goods," he says. "Th ere is a very high onus on a copyright owner to identify to the very shipment where the infringing goods are." Th at situation contrasts with the American system in which people can provide border secu- rity with tips. "Th e treaty would allow our border security to be more proactive," Isaac says. One section of the agreement Canadian Patent Reporter deals with international co-oper- ation, touching on law enforce- ment, information sharing, and the assistance of wealthier juris- dictions to build capacity and technical expertise in developing countries. It's a key issue given that, as Davis points out, much of Canadian trademark law aims to catch the manufacturer. "Th e reality of the international mar- ketplace is that it is much more likely to be imported. It's an acute problem. If Canada becomes a haven for counterfeit goods, the Canadian-U.S. border is more porous than the container ports in L.A. and Philadelphia." Other provisions on en- Let the experts help you to narrow your search and save you research time. Canadian Patent Reporter has been Canada's leading intellectual property law report since 1942. This renowned resource, available online and in print, includes precedent-setting intellectual property law judicial and board decisions from across Canada. This publication provides practitioners with the leading decisions on patent, industrial design, copyright and trade-mark law. Topical catchlines in bold print show the key issues involved in each decision. Expert case selection, editing and headnoting are a tradition with Canadian Patent Reporter. Weekly updates via email and in print, plus an annual cumulative index volume, ensure that this publication continues to be the prime reference source for intellectual property case law. Includes eReports (weekly electronic pdf version) Stay current as cases are issued with eReports e-mailed weekly to your desktop, with topically indexed case summaries linked to the full text judgments. forcement practice encourage countries to develop specialized expertise within their relevant authorities through good inter- nal co-ordination. Th ey pro- mote the collection of statistical data, dialogue with stakeholders, public education, and, of course, managing risk at the border. But Isaac fi nds the diffi culty ORDER your copy today Full service subscription (parts and bound volume) • $399/vol • 9 vol/yr P/C 0325094999 • ISSN 0008-4689 of getting the authorities in- volved in a dispute frustrates a lot of clients dealing with coun- terfeiting in Canada. "At the bor- ders, there is no ex offi cio power and no real mandate. Th ere is a system where the [Canada Bor- der Services Agency] contacts the RCMP, mostly on health and safety issues, but it's ungainly. It depends on the CBSA fi nding things despite having no man- date and the RCMP having the resources to investigate. Th e Customs Act also has strict pro- visions regarding privacy, so they can't disclose information to the IP owners. Th ere needs to be co- operation between legal enforce- ment and the rightful owners." If implemented, Isaac believes canadalawbook.ca For a 30-day, no-risk evaluation call: 1.800.565.6967 Canada Law Book, a Thomson Reuters business. Prices subject to change without notice, to applicable taxes and shipping & handling. LT0920 www.lawtimesnews.com LT0920 this agreement would create a major change in border enforce- ment measures by increasing the state's ability to step in and enhancing certain criminal of- fences. "If the government is more proactive in going after counterfeiters and makes it an unappealing jurisdiction to con- duct operations or distribute, the better off we'll be," he says. LT Edited by Marcus Gallie, Ridout & Maybee LLP Fourth Series (Volumes 1 to current): Edited by Glen Bloom, Osler, H First, S Founding Editor: Gordon F. H oskin & H enderson arcourt LLP econd and Third Series: Edited by Gowling, Strathy & H enderson, C.C., Q.C., LL.D.

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• Colombian Expansion
• Early Campaigning
• Focus On Intellectual Property/Trademark Law