Appeared in the Toronto Star on March 23, 2013 as Policy Laundering Lies Behind Ottawa’s Support for Trade Treaties Last week, the House of Commons Committee on Industry, Science and Technology released its long-awaited report on intellectual property in Canada. The report was the result of months of study with […]
Post Tagged with: "trademark"
The Standing Committee on Industry, Science and Technology released its report on the Intellectual Property Regime in Canada yesterday. The report is the result of lengthy hearings that focused on a wide range of IP issues including patent reform, trademarks, counterfeiting, and pharmaceutical protection. While most the recommendations are fairly innocuous – the committee identifies many issues for further study – there are essentially three main legislative reform recommendations. One involves limiting the scope of official marks, which appears to be the result of comments from Dalhousie law professor Rob Currie (echoed by CIPO’s Sylvain Laporte) expressing concern with governmental abuse of official marks in a way that may stifle innovation.
The other two are particularly interesting as they set the stage for the Canada – EU Trade Agreement and the Trans-Pacific Partnership. First, the report recommends anti-counterfeiting measures similar to those required by CETA and found in Bill C-56. Should criticism arise over Bill C-56 or CETA, the government will likely point to this report in support.
The second involves a classic case of policy laundering as the government has manufactured support for CETA and Trans-Pacific Partnership (TPP) provisions that were not even raised at committee. The report recommends:
The Canadian government today introduced a bill aimed at ensuring the Canada complies with the widely discredited Anti-Counterfeiting Trade Agreement. Despite the European Union’s total rejection of ACTA along with assurances that ACTA provisions would not resurface in the Canada – EU Trade Agreement, the new bill is designed to ensure that Canada is positioned to ratify ACTA by addressing border measures provisions. The core elements of the bill include the increased criminalization of copyright and trademark law as well as the introduction of new powers for Canadian border guards to detain shipments and work actively with rights holders to seize and destroy goods without court oversight or involvement.
While the bill could have been worse – it includes an exception for individual travelers (so no iPod searching border guards), it does not include patents, and excludes in-transit shipments – the bill disturbingly suggests that Canada is gearing up to ratify ACTA since this bill addresses many of the remaining non-ACTA compliant aspects of Canadian law. Moreover, it becomes the latest example of caving to U.S. pressure on intellectual property, as the U.S. has pushed for these reforms for years, as evidenced by a 2007 Wikileaks cable in which the RCMP’s National Coordinator for Intellectual Property Crime leaked information on a bill to empower Canadian border guards (the ACTA negotiations were formally announced several months earlier). [Update: On the same day the Canadian government introduced Bill C-56, the U.S. Government issued its Trade Policy Agenda and Annual Report, which calls on Canada to “meet its Anti-Counterfeit Trade Agreement (ACTA) obligations by providing its customs officials with ex officio authority to stop the transit of counterfeit and pirated products through its territory”]
A full examination of Bill C-56 is forthcoming, but its introduction raises four immediate issues: that Canada is moving toward ACTA ratification, that it is pursuing policy based on debunked data on counterfeiting, that the bill could have serious harmful effects with border guards forced to serve as copyright experts without court oversight, and the increased criminalization of copyright and trademark law.
In a world where data now moves effortlessly between computers on the Internet without regard for geographic borders, is the appearance of a website on a computer screen sufficient for a court to claim that a trademark has been used in the country? Is the use of a computer server enough to assert jurisdiction over a non-resident? My weekly technology law column (Toronto Star version, homepage version) notes that two recent cross-border cases – one Canadian and one U.S. which both pitted a U.S. company against a Canadian individual – found that it is.
The Canadian case involved a trade-mark dispute over the mark VRBO. Martin Hrdlicka, a Toronto resident, registered the mark in Canada in 2009. Just over a year later, Homeaway.com, a U.S. company that owns the popular VRBO.com site, sought to expunge the trade-mark on the grounds that Hrdlicka was not entitled to register the mark and had no intent to use it.
Homeaway.com’s legal challenge was that the company had no operations in Canada, though many Canadians may have accessed its U.S.-based website. Trade-mark law requires some use of the mark in Canada, yet the “use” in this case was largely confined to the availability of the VRBO website on computer screens.
Appeared in the Toronto Star on January 6, 2013 as Courts Adopt Aggressive Approach in Cross-Border Internet Jurisdiction Cases In a world where data now moves effortlessly between computers on the Internet without regard for geographic borders, is the appearance of a website on a computer screen sufficient for a […]