Law Times

Page 12 January 30, 2017 • Law Times www.lawtimesnews.com Clancy says that approach sets an even higher threshold for trademark applicants to cross. "In this case, the average Ca- nadian probably doesn't have enough knowledge of South East Asia to know that the mark refers to a geographic place. Once you start narrowing it to consumers of the product, it makes it much more likely that they will make that connec- tion," she says. According to Tracey, the CIPO guidance comes at a par- ticularly opportune time, with Canada preparing for the imple- mentation of the Madrid Proto- col in the next couple of years. FOCUS Canada was one of the last de- veloped countries in the world to sign on to the agreement, which allows businesses to file trade- mark registrations in as many as 100 Madrid-member countries and territories with a single ap- plication. Enacting the protocol is expected to save legal fees for trademark owners with interna- tional interests by bypassing the need for local counsel. Amendments to the Trade- marks Act intended to enact the protocol were initially made in 2014 under the previous federal government of Stephen Harper, but implementation has been pushed back several times since then. CIPO has set 2018 as its cur- rent target, when Tracey says a wave of new foreign trademarks will hit these shores. Many of those are likely to include geographic names, and he says the office's practice note will make his job a lot simpler when advising foreign clients about the chances of registering in Canada. For example, he says, advis- ing a hypothetical client who imports Taiwanese liquor on the registration of a trademark that includes a local place name used to require a complicated analysis. "Up until now, you would have to worry about how likely it was that Canadians would know about that region and whether an examiner would pick up on it. "Now you can simply ask if this is the province where the product comes from. "If the answer is yes, then you can say that the chances of get- ting the trademark registered are very limited," Tracey says. "The certainty of being able to run quickly through a straightforward analysis that gives a good sense of the reg- isterability of a mark from the outset is a good thing." LT Continued from page 8 Clarity comes with CIPO guidance Clarification useful Continued from page 9 Adam Tracey says recent guidance from CIPO about trademarks involving place names comes at a particularly opportune time. to speak, and what isn't," he says. "Getting clarification would be very useful, regardless of which way the court goes." Until then, Doyle says fur- ther test cases may prove hard to come by because of the lopsided- ness of available resources typi- cally at play in grey marketing cases. Without clear case law in their favour, he says, many grey marketers will be tempted to settle rather than take on brand owners in court. "Generally, you're going to have a large company going after a much smaller business," Doyle says. "In the Bemco case, it seems like they felt pushed around, so they wanted to go back and chal- lenge the law." Tim Stevenson, a partner in the Ottawa office of intellectual property boutique Smart and Biggar Fetherstonhaugh, often acts for brand owners, but he says he, too, would like to see a more definitive ruling on grey market rights. "If courts can decide a matter between two parties on a nar- row issue, they will try to do that rather than expound on all the issues raised in a case, and right- ly so," he says. "But it's always nice when you are instructing clients to have a clear statement of the law." In the meantime, Stevenson says he must piece together fact scenarios from various grey marketing decisions to find ones that best match his clients' pre- dicaments. He says brand own- ers will find their trademark enforcement cases strengthened against grey marketers where apparently identical products actually differ across interna- tional borders. For example, Stevenson says particular con- fectionery brands may be pack- aged or taste slightly different depending on the country in which they are sold. "If you've got those material differences, that makes it much easier," he says. "But you do have to do a detailed, thorough fac- tual analysis before you come up with an answer to advise your clients because there are no clearcut rules on what is proper and what is improper." Still, Stevenson says the Bemco decision is also encouraging for brand owners who tackle grey marketing proactively by entering into contracts with distributors to prohibit the practice, even if they are not signed in the context of litigation. "Restraint of trade struck me as a rather creative and novel defence, but I think the fact the court rejected it may have some impact more broadly on con- tracts," he says. LT © 2017 Thomson Reuters Canada Limited 00241WX-85539-NK Your portable source for fully annotated municipal legislation Available Risk-Free for 30 Days Order online: www.carswell.com Call Toll-Free: 1-800-387-5164 In Toronto: 416-609-3800 Order # 987125-65203 $126 Softcover cerlox approx. 1040 pages December 2016 978-0-7798-7125-4 Annual volumes supplied available on standing order subscription Multiple copy discounts available Shipping and handling are extra. Price subject to change without notice and subject to applicable taxes. 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