Bill C-100, or the “Canada—United States—Mexico Agreement Implementation Act”, was tabled in the House of Commons last week on Wednesday May 29, 2019. This marks a major step towards Canada ratifying the United States-Mexico-Canada Agreement (“USMCA”), which would replace the current North American Free Trade Agreement (“NAFTA”). Ratification efforts are also underway in the United States and Mexico. Chapter 20 of the USMCA, which concerns Intellectual Property Rights, can be found in full here. The full text of the Bill can be found here.

The Bill would introduce significant changes regarding intellectual property protections in Canada if it comes into force. It includes increasing the minimum period of data protection for biologics from 8 years to 10 years (section 56(3) grants the power to implement the necessary provisions by regulation), and additionally amends or adds provisions relating to trademark enforcement (section 106-108) and trade secret protection under the Criminal Code (sections 33-36). The Bill also amends parts of the Copyright Act (section 22-32).

Notably absent in the Bill are provisions or amendments to extend copyright terms from life of the author plus 50 years to life of the author plus 70 years as contemplated by Article 20.63 of the USMCA. Also absent is the introduction of patent term extensions for unreasonable delays in the issuance of a patent as set out in Article 20.44 of the USMCA. How Canada will ultimately fulfill these USMCA obligations thus remains to be seen. Under the terms of the USMCA, the government has 2½ years to implement the provisions relating to the term of copyright and 4½ years to implement the provisions relating to patent term extensions for delays in patent prosecution.

A trademark must be able to distinguish the owner’s goods and/or services from those of others. Ironically, when a trademark becomes too popular, it could lose this essential function. A trademark loses its distinctiveness when it becomes synonymous with the goods or services in ordinary parlance.

In the recent decision 8073902 Canada Inc. v. Vardy, the Federal Court ruled that the trademark DIAL-A-BOTTLE had lost its distinctiveness due to the unlicensed use of the DIAL-A-BOTTLE mark and variations thereof by many businesses and persons for many years. Inconsistent, ineffective and late efforts to enforce trademark rights were determined by the Court to be insufficient for the trademark owner to retain its exclusive rights to the trademark. In this case, the trademark owner sent out cease and desist letters, demanded internet advertisements be removed, and commenced but later discontinued actions at the Ontario Superior Court of Justice. The Court ruled that these efforts were neither sufficient nor timely. Consequently, the registration for the DIAL-A-BOTTLE trademark was expunged.

To avoid genericide, trademark owners should avoid use in a ubiquitous and generic manner, and take immediate and meaningful actions to enforce trademark rights when they become aware of unauthorized uses.

Last year, in PS Knight Co Ltd v Canadian Standards Association, 2018 FCA 222, the Federal Court of Appeal upheld the Federal Court decision that the Canadian Standards Association owns copyright in the 2015 version of the Canadian Electrical Code, Part I even though the Code has been incorporated by reference into legislation and regulations regarding electrical safety, e.g. the Electrical Safety Regulation. Last week, the Supreme Court of Canada dismissed an application for leave to appeal from the Federal Court of Appeal decision.

Last week, further amendments to the Trademarks Regulations were published in Canada Gazette Part 2. These amendments will ensure consistency between the Trademarks Act as amended by the government’s 2018 Budget Implementation Act and the Trademarks Regulations.  The amendments remove the complex provisions that were originally introduced to the Regulations to prevent potential misuse of the divisional application process during opposition proceedings.

Instead, the Act was amended last year to clarify the requirements relating to the filing of divisional applications, so that if an original application has been advertised, an applicant may only include goods and services in a divisional application that are within the scope of the original application on the day on which the divisional application is filed.  This prevents applicants from effectively avoiding the effect of opposition proceedings by filing divisional applications to pursue goods or services that have been previously dropped from an application after advertisement in an effort to settle an opposition proceeding.  Because the Act has been amended, the Regulations will now be simplified to remove the previously proposed regulations aimed at preventing such behavior, which are unnecessary in view of the amendments to the Act.

This week, the federal government announced Canada’s Digital Charter aiming to create trust in the digital world by protecting privacy and personal control of data. The government proposes to modernize the Personal Information Protection and Electronic Documents Act to clarify “what information individuals should receive when they provide consent; certain exceptions to consent; data mobility; deletion and withdrawal of consent; incentives for certification, codes, standards, and data trusts; enhanced powers for the Office of the Privacy Commissioner; as well as certain modernizations to the structure of the law itself and various definitions.”

The Canadian government has committed to investing $85.3 million over five years in a comprehensive intellectual property (IP) strategy that includes free IP education and advice for businesses and innovators; IP initiatives; and changes in patent, trademark, and other legislation. The IP initiatives include $30 million in funding for small and medium-sized businesses to leverage their IP, as well as access to IP held by government for businesses to license and commercialize.

The government has recognized the critical importance of IP for the growth and success of Canadian businesses, their competitiveness in the global economy, as well as in building a strong local economy. A stated goal of its IP strategy is to help Canadians better understand, protect, and commercialize IP.

Read more about the initiative here.

A trademark functions like an identification badge to distinguish one’s goods and/or services from those of others. When the public regards a trademark as a generic term, the trademark is converted into the name of the goods or services in ordinary parlance so that the mark is no longer uniquely associated with a particular brand and therefore cannot distinguish one’s goods or services from another. This is often referred to as “genericide”. Some examples of genericide include escalator, Yo-Yo and murphy bed, all of which were once exclusive trademarks.

Last year, the United States District Court of the Northern District of Illinois ruled that the UGG mark is not a generic term for sheepskin boots in the US and that the owner of this mark, Deckers Outdoor Corporation (Deckers Outdoor), could enforce its trademark registrations against Australian Leather Pty Ltd (Australian Leather). Interestingly, UGG is a generic word in Australia and New Zealand.

Recently, a federal jury found that Australian Leather willfully infringed Deckers Outdoor’s trademark registrations and willfully used a counterfeit of the UGG mark. The jury awarded $450,000 in damages to Deckers Outdoor on those claims.

To avoid genericide, brand owners should take steps to ensure appropriate trademark use, avoid use in a ubiquitous and generic manner, and enforce trademark rights when necessary.

The USPTO issued Examination Guide 1-19 to clarify the registrability of federal trademarks covering cannabis and cannabis-derived goods and/or services.  Use of a mark in commerce must be lawful under federal law to be the basis for federal registration under the U.S. Trademark Act.  Accordingly, the Unites States Patent and Trademark Office (“USPTO”) will refuse to register any mark for goods and/or services that show a clear violation of federal law, regardless of legality under state law.  Under federal law, marijuana, including cannabidiol (“CBD”), is a prohibited substance.  The 2018 Farm Bill, enacted on 20 December 2018, removed “hemp” from the definition of marijuana, which means that cannabis plants and derivatives (e.g. CBD) that contain no more than 0.3% THC on a dry-weight basis are no longer controlled substances under federal law.  Accordingly, trademark applications filed on or after 20 December 2018  that identify goods derived from “hemp” are now registrable.  The Examination Guide also sets out the procedure for examining marks for cannabis and cannabis-derived goods and/or serviced filed before 20 December 2018.

The World Intellectual Property Office (WIPO) announced that, for the first time, more than half of all international patent applications were filed by Asian applicants in 2018. At a country level, US-based inventors filed the most applications, followed closely by China and Japan. For more information, see the announcement by WIPO.

WIPO’s Patent Cooperation Treaty (PCT) passed a record-breaking quarter-million (253,000) filing mark in 2018, a 3.9% increase over 2017, while WIPO’s Madrid System saw 61,200 international trademark applications, a 6.4% increase. WIPO’s Hague System for industrial designs saw 3.7% growth in 2018, reaching 5,404 applications.