Industry Committee on May 5th, 2014

[Peggy Nash, NDP, Parkdale—High Park, ON]

Let me just clarify on the point of order that's not a point of order.

Actually, we don't have the right to vote on this at the committee stage. Any amendments and the actual adoption at the committee stage is before the finance committee, not before the industry committee.

[The Chair, Conservative, David Sweet]

We'll leave that debate there.

We've stopped the clock for Ms. Nash, so please go ahead, Ms. Nash, with your questions.

[Peggy Nash, NDP, Parkdale—High Park, ON]

Thank you, Mr. Chair.

Mr. Halucha, since the Trade-marks Act dates back to 1953, as you say, and this represents a significant change, why are there no public consultations on this significant change so that Canadian businesses across the country can have input on this significant change?

[Paul Halucha]

Just to clarify, when I'm speaking of it as a significant change, it's significant in the context of administrative changes. We're not changing the rights fundamentally the way they were done under the Copyright Act, or the counterfeiting bill that was debated.

[Peggy Nash, NDP, Parkdale—High Park, ON]

I'm using your words.

[Paul Halucha]

Yes. I just want to modify my own words.

In terms of consultations, the government consulted on Madrid and Singapore in both 2005 and 2010, and most recently in 2013. I would point out that these are not new treaties. The Singapore Treaty was adopted in 2006—

[Peggy Nash, NDP, Parkdale—High Park, ON]

If I could just interrupt you for one minute, I'm wondering, through you, Mr. Chair, would it be possible to find out who was part of these consultations? For example, in 2013, I'm wondering if the officials could make the committee aware of who was part of, say, the 2013 IP consultations.

[The Chair, Conservative, David Sweet]

We could certainly request that.

[Paul Halucha]

We can happily do that. Actually, the 2010 consultations are all still available on CIPO's website, including the submissions that were made.

I was just in the course of saying that the treaties are not brand new. The Madrid Protocol dates from June 1989. The Singapore Treaty dates from 2006—

[Peggy Nash, NDP, Parkdale—High Park, ON]

Sorry, I'm so limited in time, I have to interrupt you.

I'm concerned about the declaration of use provision. As my colleague across the way has said, the legal community has raised this as a concern. Why make this change if it's not essential to these treaties? Our understanding is that experts agree that trademark use is one of the basic principles of the Trade-marks Act, and that rights ensue from the use of a trademark.

We have a Supreme Court of Canada ruling on this, the Masterpiece ruling.

If Bill C-31 becomes law, in your view, could it become a constitutional challenge by the provinces?

[Paul Halucha]

You had a number of questions in there.

To go back to the first point, the declaration of use form does not signify all of the elements of use that are in the Trade-marks Act. Therefore, getting rid of a single form does not mean that use is not part of the act anymore.

For example, section 30(1) of the act, clause 339 of the bill, says:

A person may file with the Registrar an application for the registration of a trademark in respect of goods or services if they are using or propose to use, and are entitled to use....

It is the core grounds of use.

In terms of opposition, which is the point at which people can challenge the granting of a new trademark, the applicant can bring forward a challenge, an application on the grounds that it's not being used and that there's no intention to use. This is in clause 343 of the bill.

[Peggy Nash, NDP, Parkdale—High Park, ON]

If I could just pursue that, couldn't someone keep flooding the marketplace with unused trademarks, and if it's challenged, it takes time to go through the process, and then they could apply once again? We've seen situations like this in the U.S. where there are—what are they called—trolls that are flooding the marketplace.

Is there no concern on the part of the government that this could be a result of this change?

[The Chair, Conservative, David Sweet]

We're over time but if you can answer that briefly, go ahead.

[Darlene Carreau, Chairperson, Trade-marks Opposition Board, Department of Industry]

The trademarks office is aware of that and we're not concerned. There are already bad faith provisions in the Trade-marks Act that prevent businesses from filing and obtaining trademark rights on that basis. Why would a business do that? Who would be in the business of filing trademarks for which they have no business professed?

[Peggy Nash, NDP, Parkdale—High Park, ON]

Well, they're doing that now.

[The Chair, Conservative, David Sweet]

We're way over time, but I thought it was a very important question to get answered.

Now on to Madam Gallant for five minutes.

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

Thank you, Mr. Chairman, and through you to our witnesses.

This is Bill C-31, Canada's economic action plan. I think you outlined the benefits and how our economy will grow as a consequence of businesses being able to focus more on marketing and sales, and not having to re-qualify for all the trademarks with these different countries involved in the treaties. Thank you for clarifying why it's part of Canada's economic action plan.

Going through this, I know we did study Bill C-8, and I believe, Mr. Halucha, you were here. Would you refresh our memories on the difference between a certification mark and a trademark?

[Darlene Carreau]

A certification mark is used as a designation of a particular standard, such as that of the Canadian Standards Association. It has to do with making products to a certain standard.

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

Okay. Would you be able to give an example as to how a registration would be likely to unreasonably limit the development of any art or industry? I believe that is outlined in clause 331, and it would add the proposed section to the TMA, which stated that it does exactly that.

[Darlene Carreau]

It's generally around functionality, so if a product...you're entitled to trademark protection but not to the extent that it is something that all businesses in that industry would be able to use and market.

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

Could you give us an example?

[Darlene Carreau]

Lego blocks. Lego tried, and there's a Supreme Court case on that. The functionality of the knobs on the Lego blocks were claimed as a trademark. It was held that those were functional in nature and therefore, Lego couldn't obtain trademark protection on those knobs.

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

Further down in clause 332, proposed subsection 20(1.1) reads:

(1.1) The registration of a trademark does not prevent a person from using any utilitarian feature embodied in the trademark.

Would that be a star, for example, inside a circle, or some other feature? Are you saying that the star itself is not a trademark, but all these symbols together in the way they're arranged would be the trademark?

I just want to understand what you mean by “utilitarian feature embodied in the trademark“.

[Darlene Carreau]

If you have a trademark, but part of that trademark claim relates to a functional element within that trademark, you would not be able to claim trademark rights over that functional element.

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

Again, I will have to ask you for an example so I can understand this better.