Industry Committee on May 12th, 2014

[Cheryl Gallant, Conservative, Renfrew—Nipissing—Pembroke, ON]

So now with the Internet and what's available online, if you go to the website for trademarks, Canadian Intellectual Property Office—www.cipo.ic.gc.ca—it really provides a step-by-step way of searching trademarks and applying for one. It really makes it look like somebody who is starting up a small business with an idea in mind and a trademark in mind can actually go through the process themselves.

So I would like you to tell me why going through the process online would be insufficient, if all of the steps are followed on the part of an applicant.

[Janet Fuhrer]

Yes. If I may, first, it's the database. It's okay for finding the exact market interest. It will not necessarily locate phonetic similarities, marks that have a similar idea or connotation, all of which can prevent the registration of a trademark. So that's a difficulty with the current database. So a company comes along, it wants to register XYZ. Someone may have XYZA. That search won't necessarily locate XYZA, and XYZA might oppose...XYZA might be cited. So this owner who's done his or her own search could be facing these obstacles to registration and have gone a significant way down the road in terms of cost and trying to develop this XYZ brand, but not be able to do anything with it in the end. So that's a risk of....

There are lots of other issues as well. Describing goods and services; there are some tools online, but there's a lot of case law around what's an acceptable description of a good or what's an acceptable description of a service.

[Mark Eisen]

Yes, there are two issues there. Issue number one, is XYZ actually confusing with XYZA? There are many factors that the professional looks at in determining that. The other is the nuances, as Ms. Fuhrer was suggesting, of doing actual searching. I've been practising for over 30 years and I don't do trademark searching. I have a professional trademark searcher who does all of my searches for me because I would not hazard a guess at how that could be done comprehensively by someone just walking up to a computer and searching. So I actually have a searcher who lives here in the Ottawa area, who does all of my trademark searching.

[Cheryl Gallant, Conservative, Renfrew—Nipissing—Pembroke, ON]

Mr. Gérin, did you...?

[Michel Gérin]

I don't practice so I'd rather leave it to them.

[Cheryl Gallant, Conservative, Renfrew—Nipissing—Pembroke, ON]

Do lawyers who practice in this area receive updates on a regular basis of what is new to the trademark database? Or is that again something that you farm out to someone who is doing that day in, day out, looking at the database?

[Janet Fuhrer]

There is a Trade-marks Journal that's electronic now. It's a weekly electronic publication where any approved application is advertised. So that happens once a week and there are updates. So the commercial searchers all get these updates from the Intellectual Property Office so that they can conduct their searches.

[Cheryl Gallant, Conservative, Renfrew—Nipissing—Pembroke, ON]

Each time you help a client with an application, a brand new search has to be done just in case there's been something added to the database, which you may have searched with the exact same genre previously, just to double-check.

[Mark Eisen]

The reliability of that previous search goes down as time passes. So whether you draw the line at two months or four months, by six months you're doing a different search.

[Janet Fuhrer]

The other complication, too, is that there's something called the Paris convention, which Canada already belongs to, as does most of the world. So an application could be filed in a foreign country like the U.S., and that applicant has six months to file in Canada and have the Canadian application treated as though it had been filed on the same date as the U.S. application. So I do my search at three months and I won't find that U.S. company because that person won't have filed or may not have filed yet in Canada.

[The Chair, Conservative, David Sweet]

Thank you very much, Madam Gallant.

Thank you very much for your testimony.

Because everybody was so efficient, I now have this luxury of asking a question.

Because of the kind of questioning that was going on, there were a couple of things that I got confused about. I did quite a bit of research on this. Regarding the other countries that are party to these treaties, do you have any specific evidence that there was a vast growth in trademark trolls?

[Mark Eisen]

I do not.

Michel, are you aware of any?

[Michel Gérin]

No.

[The Chair, Conservative, David Sweet]

Okay.

I was under the impression that the declaration of use is not really used evidentially in courts. It's really not even used by the governments. It's filed and that's it. Is that not the case?

[Mark Eisen]

That's true, but it's used by practitioners who, when searching a mark and noting that a declaration of use was filed recently, will suspect that the mark may still be in use in Canada and suggest to a client that this is not one to challenge. It's not used by the courts. It is, however, used by professionals.

[The Chair, Conservative, David Sweet]

But it is one of many ways of checking for trademarks out there, right, a vast array of them?

[Mark Eisen]

Yes. It is one of the many tools.

[The Chair, Conservative, David Sweet]

Yes.

[Janet Fuhrer]

If I may add to that, though, again, at the moment, if a trademark has been used already—and a good number of them are before someone files an application—there is a requirement to state that in the application itself. It also technically is a declaration, but it can be stated in the application that use has occurred and a date of use can be provided. That's all useful information when trying to clear marks.

[The Chair, Conservative, David Sweet]

Thank you.

On behalf of the committee, I thank you very much, witnesses, for your testimony today.

Colleagues, in our transition, try to only take two minutes of shaking hands, etc. We need to go in camera for some quick business.

[Proceedings continue in camera]