Recent trade-mark law
amendments by G8 countries
have prompted the Canadian
Intellectual Property Office
(CIPO) to reassess Canada’s
trade-mark regime. While
Trade-marks Act revisions are
necessary, CIPO must ensure it
protects the interests of Canadian trade-mark owners and
maintains the current benefits of
Canadian practice.
Two treaties, known as the
Madrid Protocol and the Singapore Treaty, may guide CIPO’s
efforts. The Madrid Protocol
permits trade-mark owners in
member countries to register
their rights in multiple jurisdictions by filing a single application. When compared with the
current practice of filing multiple applications, a Madrid filing reduces costs, but only for
those who file in more than four
jurisdictions. This does not
apply to a significant majority of
Canadian applicants, and adherence to the Madrid Protocol will
offer them little, if any, benefit.
The Singapore Treaty standardizes filing procedures
among signatory nations, sim-plifies the administration of
trade-mark rights and recognizes non-traditional marks
such as holograms, sound marks
and olfactory marks. It also
obliges parties to adopt the antiquated Nice Classification system for grouping lists of wares
and services within trade-mark
applications.
The government has taken no
position on ratifying the treaties.
However, CIPO alleges that Can-
TIM
BOURNE
“The Nice
Classification system
was developed to
standardize how
wares and services
are described...
Today’s electronic
searching options
obviate this need.
ada’s compliance with the
accords will eliminate international isolation resulting from
an outdated trade-marks regime.
CIPO officials recently conducted webinars to solicit comments from members of the profession. Two main topics
dominated the sessions: whether
to relax the requirement that
applicants must use a trade-mark before obtaining a Canadian registration, and whether
to adopt the Nice Classification
system.
Use prior to registration
Currently, one must have
used a trade-mark in Canada or
abroad for a registration to issue.
Under CIPO’s proposed new
regime, registration is possible
even if the applicant has not
used the trade-mark anywhere.
The registrant would then have
up to three years to submit a
declaration of use. All registrants
would file a declaration of use in
the year prior to renewal of the
registration. Failure to submit a
declaration in either circumstance would result in cancellation of the registration.
While this proposal may
diminish inequities by requiring
declarations of use in Canada by
both foreign and Canadian
trade-mark owners, it will also
encourage trafficking in trade-marks by providing protection,
for a period of time, to those who
do not ever intend to use the
trade-mark. Costly Federal
Court litigation may be necessary to invalidate nuisance registrations, since the summary
administrative procedure for
cancelling registrations based on
non-use cannot be engaged until
three years post-registration.
The current version of the
Trade-marks Act does not clearly
enumerate a false declaration of
use as a basis for invalidation.
Accordingly, removing the
requirement for use prior to
registration potentially limits
examination and imposes a
burden on trade-mark owners to
police their rights by opposing
applications or invalidating
registrations.
CIPO’s proposal makes little
reference to how the regime will
affect trade-mark enforcement,
other than to suggest that regis-
trants would be required to
prove use before launching legal
proceedings. This statement
leads to more questions. Why
should holders of legitimate
rights be expected to share the
burden of a barrier to enforce-
ment designed to prevent abuse
by opportunists? What is the
venue for proving use and how
will this occur?
Nice Classification
The Nice Classification system was developed to standardize how wares and services are
described, so as to refine applicants’ rights and streamline the
trade-mark search process.
Today’s electronic searching
options obviate this need. Canada’s legislative requirement
that goods and services be
defined specifically and in
“ordinary commercial terms,”
along with the acceptable definitions from the Trade-marks
Office’s Wares and Services
Manual, already delineate the
scope of registrations.
CIPO has not finalized the
details of implementing the classification system. However,
implementation will not supersede the legislative requirements
of specificity and ordinary commercial terms. Accordingly,
adopting classification will
unnecessarily complicate the
trade-mark application process.
Classification presents another
specific disadvantage for Can-
adian applicants who file under
the Madrid Protocol. If the appli-
cant defines its wares and servi-
ces in ordinary commercial terms
within the application, it could
forfeit rights in other jurisdic-
tions where broader definitions
are permitted. The alternative is
to incorporate broader defin-
itions within the application as
filed, and incur the costs and
delay of redefining the wares and
services during prosecution in
Canada.
Next steps
The recent consultations confirm that CIPO strongly favours
adherence by Canada to the
Madrid Protocol and the Singapore Treaty. CIPO now intends
to prepare a formal proposal.
Hopefully, CIPO will continue to
consult with trade-marks practitioners so that the rights of Canadian trade-marks owners are
fully reflected. ;
Tim Bourne practises trade-
mark law with the Ottawa offices
of Ridout & Maybee LLP.
Establish rights ‘before anyone becomes aware the invention is worth millions’
University
Continued From Page 11
In 2001, Fardad learned by
happenstance that a company
had been established to commercialize the invention, with McGill
and Polyvalor given shares in the
NASDAQ-listed company as
payment for the grant of license
rights in the invention. During
the high-tech bubble in the early
2000s, McGill and Polyvalor
made a sizeable amount of
money after selling their shares,
with Polyvalor alone making
more than $8.6-million in profit,
half of which was handed to
Polytechnique.
In 2003, Fardad reached an
agreement with McGill for a
share of the revenues made
from the commercialization of
his invention, based on the university’s IP policy. When Fardad approached Polyvalor, it
refused to settle.
“The issue in the case was
whether Fardad had a right to a
portion of the money that was
generated by the selling of shares
of a company whose business
was based on Fardad’s invention,” said Kugler.
While the lower court held
that Fardad’s share should be
calculated based on the revenues
received by Polyvalor, which
would have granted Fardad
$1.4-million, the appeal court
reversed that part of the ruling.
The appeal court instead determined that Fardad’s share should
be based on the revenues received
only by Polytechnique, pointing
out that Polyvalor and Polytechnique are two distinct entities.
“The court of first instance
decided that the fact that Poly-
technique decided to form this
partnership to commercialize
inventions could not be set up to
prejudice Fardad for his share of
the proceeds generated by the
invention, but the Court of
Appeal disagreed — and that was
disappointing,” said Kugler.
“
The issue in the case
was whether Fardad
had a right to a portion
of the money that was
generated by the
selling of shares of a
company whose
business was based
on Fardad’s invention.
by employees. The court held
that in the absence of any
specific provisions in the Civil
Code or the Labour Code, com-
mon law must be applied.
“According to common law,
intellectual property in inven-
tions resulting from the work of
employees belongs to the
employer,” said Quebec Court of
Appeal Justice Pierre Dalphond.
Reasons: Corporation de l’École
polytechnique de Montréal c. Fardad, [2010]
J.Q. no 4729.
