Thank you.
INTA believes that the Canadian Intellectual Property Office should not destroy trademark application or registration records unless and until electronic copies are made and perpetually maintained. Although INTA is mindful of the practical difficulties and costs associated with warehousing original documents, in our view the downside risk of losing public access to these documents outweighs the hardships to the Canadian Intellectual Property Office associated with maintaining those records.
Neither the United States Patent and Trademark Office nor OHIM destroys the electronic versions of the documents upon the destruction of the paper version, and paper versions are kept without limitation. If Bill C-8 does not provide for electronic copies prior to destruction, the Canadian Intellectual Property Office will be significantly out of step with both the U.S. and European intellectual property offices when it comes to trademark files record retention. In any event, INTA believes that the proposed six-year clock as a countdown to destruction of documents is at odds with many established private sector file retention policies. INTA recommends that Bill C-8 be amended to require that electronic copies be made and retained by the Canadian Intellectual Property Office before destruction is permitted.
Finally, INTA also urges you to expand clause 21 of the bill to provide for a cause of action against not only counterfeit goods that are identical to those appearing in the trademark owners' registration but also those goods that are reasonably ancillary, incidental, or connected to the goods that appear in the trademark owners' registration. Also, we urge that clause 21 of the bill be expanded to prohibit the unauthorized use or display of a trade name that is identical to or confusing with a registered trademark. Such changes, in keeping with the law concerning confusing trademarks in Canada, will assist trademark owners in combatting counterfeiters who ride on the trademark owner’s product line expansions before a Canadian trademark is issued or who try to avoid the reach of these new provisions on the basis of an argument that the impugned sign was a trade name rather than a trademark.
In conclusion, INTA appreciates the efforts of the Standing Committee on Industry, Science and Technology and its consideration of our testimony. INTA supports Bill C-8, but our members would like to see amendments to make it more effective in protecting the Canadian public, including adding tougher and effective deterrent factors against counterfeiters to protect consumers from harmful counterfeits; developing stronger measures and an operational administrative regime at the border to keep counterfeits out of Canada; and making a number of practical technical amendments regarding trademark practice.
Thank you again for this opportunity to participate in these committee hearings.