Industry Committee on Dec. 2nd, 2013

[Mike Lake, Conservative, Edmonton—Mill Woods—Beaumont, AB]

Sure. G-5 was drafted to amend the bill by deleting a clause. The more proper way to do it is to vote against the clause and have it removed that way.

[Chris Charlton, NDP, Hamilton Mountain, ON]

No, I understand that part, but we're deleting in G-5. G-6 then restructures the clause. The two are related to each other. I don't know, procedurally, whether—

[Mike Lake, Conservative, Edmonton—Mill Woods—Beaumont, AB]

Do you have one of the officials comment?

[Chris Charlton, NDP, Hamilton Mountain, ON]

I guess I'm linking a conversation about two amendments, G-5 and G-6, because I think they're interrelated. G-5 deletes a clause. G-6 then restructures the existing clause. When I look at those changes, I don't understand why that was necessary.

Can you explain it to me?

[Michael Ryan]

After the legislation was tabled, we received some comments, or I believe comments were supplied to the committee with respect to the exact drafting and whether it actually fulfilled the entire intention of the provision. I'll provide a bit of information on where the law stands as it is now, on what it would do unamended, and what the amendment seeks to do.

Currently with respect to a registered trademark, you have protection against a mark that is identical to or confusing in regard to that mark for the same goods that are listed on the trademark register or for goods that would be confusing with the list on the register. What Bill C-8 also sought to do, under clause 21, is that not only is that infringement at the time of sale, which it currently is, but it would also seek it earlier in the supply chain, so that's importing for the purposes of sale or manufacturing for the purposes of sale.

However, the way it was drafted, it limited those new civil causes of action to only the explicitly registered goods or services on the registry. This created a bit of discord between what's an infringement to sell versus what's an infringement earlier in the supply chain.

It can be difficult to follow, so I think it would be best to use an example. Since it's everyone's favourite example, we'll look at Canada Goose. They registered their trademark for jackets, but they didn't—hypothetically—register it for mittens and gloves, for example, which are also winter attire. If somebody were selling a knock-off version with a counterfeit Canada Goose mark on gloves, that would be infringing, because it would be confusing with a registered trademark, even it weren't explicitly listed on the registry.

Bill C-8 sought to ensure that not only is that at the time of sale, but that it is also earlier in the supply chain. Bill C-8, if unamended, would allow an infringement for anyone importing for the purpose of sale, or manufacturing for the purpose of sale, for example, those coats or jackets, but not those gloves or mittens. What the restructuring ensures is that whatever is an infringement to sell is also an infringement to manufacture for the purposes of sale. It's filling a gap there in the protection for types of wares and services that aren't on the trademark registry.

[Chris Charlton, NDP, Hamilton Mountain, ON]

I'm sorry. Maybe I'm not clear yet. You're saying that, through this change, it's now possible to go after goods that aren't in fact trademark protected in the first place?

[Michael Ryan]

They are protected, but they're not necessarily listed explicitly on the registry, so your scope of protection isn't limited only to the wares or services listed on the registry. If my good is a jacket but it would be confusing to sell gloves or mittens as well, then my scope of protection extends to those types of goods.

[Chris Charlton, NDP, Hamilton Mountain, ON]

Who decides what the scope of that is?

[Michael Ryan]

That's left to the courts, but with respect to this, there's an analysis, which asks, is it confusing? Would a consumer looking at these in the marketplace think they are from the same source?

[Chris Charlton, NDP, Hamilton Mountain, ON]

It's not easy for me to say whether I support this or not. This seems like a pretty significant change, and I didn't hear any witness testimony about it one way or the other. I'm not trying to give you a hard time; I'm just trying to get my head around something that seems more significant than technical.

[Mike Lake, Conservative, Edmonton—Mill Woods—Beaumont, AB]

Could I just jump in for a second?

If you think about it for Canada Goose, Nike, or whatever, they have a brand that's valuable. It might make sense that someone counterfeits the trademark—basically uses the trademark—and makes gloves. They aren't made by Canada Goose, but they put the Canada Goose logo on those gloves. That's clearly an infringement. It clearly should be wrong. I think everybody would agree with that being wrong, but it's treated differently, the way the bill was drafted, than the way this change would take it. That's all it is.

It doesn't go, I think, judging from your question.... Of course, it's tough when we're in this context and trying to understand a change like this. I think you might be thinking that it's going a lot further than it's going. It's just saying that you can't use a name that isn't yours to sell something that Canada Goose doesn't make. You can't just use the Canada Goose brand to sell something that they happen not to make, right?

If I can get a clarification, I think that's what we're saying here: it should be treated the same way as if they were counterfeiting a Canada Goose jacket. The way it was drafted, it wasn't treated the same, and this is correcting that.

[Chris Charlton, NDP, Hamilton Mountain, ON]

I'm having a hard time figuring out how broad this new power actually is. Again, I feel like I'm not in a position to say yes or no because I'm not certain about the breadth of these provisions. That's all.

I'm going to let others ask some questions.

[The Chair, Conservative, David Sweet]

Madame LeBlanc.

[Hélène LeBlanc, NDP, LaSalle—Émard, QC]

I sort of feel the same way as Ms. Charlton. The proposed provisions are still fairly long.

Bill C-8 amends the Copyright Act. Do these proposed provisions respect the spirit of that act? It covers a lot of things.

Let's take Canada Goose for example. It's a company that mainly makes coats. If someone made gloves that Canada Goose did not manufacture and puts the Canada Goose logo on them, that provision would make it possible to sue that person and seize the goods in question.

I would like to know whether this respects the provisions of the Copyright Act.

[Paul Halucha]

The point that you made about the gloves is exactly the point that Mr. Lake was making, which is the fact that they haven't selected gloves, and that protected gloves does not mean that their brand would not be impacted if gloves bearing the Canada Goose trademark appeared on the marketplace. This would effectively provide for them to undertake a civil course of action.

[Michael Ryan]

This clause is relating to the Trade-marks Act. You're asking about a cross-over with respect to the Copyright Act.

Currently, subsection 27(2) of the Copyright Act deals with importation for the purposes of selling, distributing, or by way of trade, distributing, or exposing for sale or rental. These are similar proposals within the Trade-marks Act.

Ultimately, one of the key messages I'd take home is that currently we're ensuring that if it's an infringement to sell, it's infringement to do the acts leading up to sale. That's what this is really getting at.

[Hélène LeBlanc, NDP, LaSalle—Émard, QC]

Logos and trade-marks are protected. They cannot be used or affixed to anything in order to sell products more easily.

[Christopher Nelligan]

If it assists you to know, I came into all this as just the dumb customs lawyer who had to figure out intellectual property, so I had to simplify things a great deal.

When it comes to using a logo for a different product, to my understanding what is and is not confusing to consumers is ultimately determined in the market. To borrow Michael's analogy, yes, winter gloves would be confusing because that's winter wear generally. The general public would associate it with Canada Goose, the company, as opposed to this impostor. If, however, hypothetically there were some other old established company in Canada that had a circular logo, not too similar but close enough, maybe with a few snowflakes on it and so on, and they were called Canada Geese, and they sold frozen geese for Christmas dinners and so on, and their logo looked a bit like Canada Goose, the jacket company's, that would not be confusingly similar. The public would figure that one out and we would not have the problem. That's the general issue this is addressing.

[The Chair, Conservative, David Sweet]

I'm suddenly getting hungry for Christmas dinner.

It appears we have exhausted the conversation on that.

We're on G-6 now. Shall it carry?

(Amendment agreed to)

Shall clause 22 carry as amended?

(Clause 22 as amended agreed to)

(Clauses 23 to 27 inclusive agreed to)

(On clause 28)

Okay, we have LIB-3.

[Judy Sgro, Liberal, York West, ON]

Mr. Chair, this amendment eliminates the provision allowing for the destruction of records after six years. I'd be interested in the department's comments as to why they feel that six years is sufficient on something as important as this kind of information.

[Paul Halucha]

I have just a couple of points. This part of the act would provide the Canadian Intellectual Property Office with the flexibility to destroy trademark records six years after a file is no longer active, and once it is determined that the records have no business, legal, or financial value. Maintaining records is obviously an extremely important part of government administration, but there are points where business records are no longer of value, and at that point the cost of maintaining and guarding those files outweighs their value on the marketplace. This provision simply provides the flexibility to CIPO, the Canadian Intellectual Property Office, to destroy files once they are determined to be dead, no longer useful, with no business value.

[Mike Lake, Conservative, Edmonton—Mill Woods—Beaumont, AB]

That's okay.

[The Chair, Conservative, David Sweet]

Madame Quach.

[Anne Minh-Thu Quach, NDP, Beauharnois—Salaberry, QC]

Thank you, Mr. Chair.

The lawyer for the International Trademark Association recommended that we keep electronic copies of documents. If we decided to do that, could we simply make a friendly amendment to the Liberals' amendment saying that it would be possible to destroy the documents after a digital copy was created? I imagine that operating that way would take less space and would be helpful.

Would Ms. Sgro consider that a friendly amendment? Could the department's representatives tell us if they think it would be helpful and sufficient?

[Paul Halucha]

Fundamentally, under the scenario where a file is destroyed, there has already been an assessment that it has no business value, and in that context, it's not free to digitize records and it could be quite expensive. So effectively, the crown would be incurring a cost on an on-going basis to undertake the digitization and then the perpetual storing of files for which there is no business value.

I note as well that there were discussions with INTA on the question of how long records should be maintained. Until very recently, they had been contending that these should be kept on a perpetual basis, that there should be no point at which records should be destroyed.

This section is limited to what are considered dead files. This would be, for example, a trademark application that's been filed and then never proceeds past the examiner, so it never becomes a trademark. It would include trademarks that are not renewed, so the individual rights holder who has taken the step to seek the trademark reduction has now determined that there is no value from the trademark, so they're not renewing the file. It is truly information that has no business value.