Evidence of meeting #22 for Industry, Science and Technology in the 41st Parliament, 2nd Session. (The original version is on Parliament’s site, as are the minutes.) The winning word was trademark.
A recording is available from Parliament.
4:45 p.m.
NDP
Brian Masse NDP Windsor West, ON
Okay.
I understand that with the proposal being made by the government here, the onus will now be put on the trademark company rather than on someone violating the trademark. Can you explain a little bit about that? It seems rather onerous that you would have to prove that somebody else is actually interfering with your trademark, versus the way things are done in the current system, in which there's a little bit more policing involved.
4:45 p.m.
Second Vice-President, Canadian Bar Association
That's right. At the moment, there is a lot more policing involved at the examination stage, and that is being eliminated.
4:45 p.m.
NDP
Brian Masse NDP Windsor West, ON
Okay, let's move to clutter. I understand there are around 40,000 applications in place right now. Some of the testimony in the Senate was about how, with the changes proposed by the government, we'll go from basically 1% or 2% of trademarks being challenged, up to 7% or 8%. Is that the clutter you're worried about, all those extra changes and challenges, which will mean your trademark application will take longer than before?
4:45 p.m.
Second Vice-President, Canadian Bar Association
It could, if oppositions are launched. These are third-party oppositions. If a trademark owner has been using their mark for years and maybe, for whatever reason, they didn't get around to registering it, and someone else comes along and scoops it, if the owner is in time, the owner can oppose the registration. We do see that there will be significant increases in opposition proceedings.
4:45 p.m.
NDP
Brian Masse NDP Windsor West, ON
Okay, so this may require more resources, or it's going to take longer for the application to get through, then.
4:45 p.m.
NDP
Brian Masse NDP Windsor West, ON
Okay.
With regard to squatters—and you also mentioned registering domain names—I see that as a significant challenge for businesses, because if that's happening, they can't progress some of their products and brands. How much of a hit to the economy could that be?
Do you have any idea, Mr. Eisen?
4:50 p.m.
Treasurer and Past President, Intellectual Property Institute of Canada
Well, it could be fairly significant, I think, if in fact squatters start to see this opportunity and go the way things went with domain names. I think that could actually be very significant, because the onus is thrust upon the person who considers that they rightfully own this trademark to challenge that right. That right can be an existing registration because no use was required to be proved before the registration was granted. So, it may not be a problem six months from now, but I can see that being a significant problem in a short time.
4:50 p.m.
NDP
Brian Masse NDP Windsor West, ON
Could businesses be delayed from launching products and services because of that?
4:50 p.m.
Treasurer and Past President, Intellectual Property Institute of Canada
It could make that more onerous and burdensome. I don't know how much of a delay would be involved, but certainly businesses get back to the drawing board very quickly when they have plans like this that are scuppered by existing trademark registrations.
4:50 p.m.
NDP
Brian Masse NDP Windsor West, ON
There is a significant problem with domain names. There's somebody fishing to see whether I want to buy brianmasse.something or whatever, and they want $200 to $600 for it, and stuff like that. It becomes a pain.
How much time do I have, Mr. Chair?
4:50 p.m.
Conservative
The Chair Conservative David Sweet
Thank you very much, Mr. Masse.
We now go to Madam Bateman for four and a half minutes.
4:50 p.m.
Conservative
Joyce Bateman Conservative Winnipeg South Centre, MB
Thank you so much, Mr. Chair.
Thank you to all of our witnesses. I very much appreciate you being here.
I'm going to continue with my colleague's line of questioning on the declaration of use form. But first I want you, as lawyers, to give me your opinion. Free legal advice, who knew?
We got some information on amendments related to the international treaties on trademarks for Bill C-31, and one of the comments was that litigation outcomes are determined on actual use of a trademark in the marketplace. In other words, they're not based on filling out a form or not filling out a form. They're based on actual use. Is that correct or is that not correct?
4:50 p.m.
Second Vice-President, Canadian Bar Association
That's part of the picture. What can happen is that spurious folks who have no interest in Canada come in. They will not now face a requirement to declare use. They can get registered. They can go and initiate infringement in passing off or—
4:50 p.m.
Conservative
Joyce Bateman Conservative Winnipeg South Centre, MB
So you can sue somebody without actual use in the marketplace?
4:50 p.m.
Second Vice-President, Canadian Bar Association
You can. Now, whether you will be successful.... But it can be used as a strategy to extort money from the businesses. Then what the business owner has to do is say, “I know this person hasn't used, but now I have to go to the trouble of expunging that registration or paying them to buy that registration.”
4:50 p.m.
Conservative
Joyce Bateman Conservative Winnipeg South Centre, MB
Okay, but theoretically you're okay with the fact that litigation is generally based on actual use of a trademark in the marketplace.
4:50 p.m.
Conservative
Joyce Bateman Conservative Winnipeg South Centre, MB
But you can also suck money out of a company with theoretical lawsuits that, in your own words, would not necessarily be successful but would be expensive.
4:50 p.m.
Second Vice-President, Canadian Bar Association
Right. Again, we saw this in the domain name world. This was all foreshadowed by the domain name world, where cybersquatters came along and they then used those domain names to extort some legitimate businesses.
4:50 p.m.
Conservative
Joyce Bateman Conservative Winnipeg South Centre, MB
Yes. We had other witnesses on this and we learned from our other witnesses last week about the declaration of use being a document. I just want to follow up on some of your comments. The comment made to us at that point was, the only other country still requiring this document is the Philippines, and the U.S. only requires it for foreigners. Is that—
4:50 p.m.
Conservative
Joyce Bateman Conservative Winnipeg South Centre, MB
So the U.S. doesn't only require it for foreigners?