CIPO interview: continuous improvement

As recently as 2012, Canada was on the “priority watch list” in the Special 301 Report from the Office of the US Trade Representative (USTR); the IP equivalent of the naughty step. In 2013 and even now in 2014 it is just one step down, on the “watch list”.

The US “urges Canada to implement its WIPO Internet Treaties commitments in a manner consistent with its international obligations and to continue to address the challenges of copyright piracy in the digital age,” the USTR said in its most recent report.

It also pleaded with its naughty northern neighbour to expand the scope of planned legislation on pirated and counterfeit goods, and expressed “serious concerns” about the availability of rights of appeal in Canada's administrative process for reviewing regulatory approval of pharmaceutical products. There was plenty more besides.

So how does Sylvain Laporte, commissioner of patents, registrar of trademarks and chief executive officer of the Canadian Intellectual Property Office (CIPO) since April 2011 respond?

“Since 2007, Canada has modernised its IP regime through several initiatives aimed at responding to domestic concerns while bringing our regime in line with international standards,” he told WIPR ahead of September’s World IP Congress of the International Association for the Protection of IP (AIPPI) in Toronto.

The list of improvements is a long one. “In 2007, Canada passed the Anti-camcording Bill, which amended the Criminal Code to prohibit the recording of a movie in a movie theatre without the owner’s consent,” says Laporte.

“In 2012, the Copyright Modernization Act successfully brought Canada’s copyright regime into the 21st century and the digital age. In 2013, the government tabled the Combating Counterfeit Products Act to strengthen existing legislation governing border, civil and criminal enforcement of IP rights.

“Most recently, the government tabled in parliament the Madrid Protocol, the Singapore Treaty, the Nice Agreement, the Patent Law Treaty and the Hague Agreement, and is taking the necessary steps to implement the related legislative and regulatory changes.

“With these changes, Canada has a solid and respected IP regime that is increasingly aligned with international practices,” Laporte says.

The five multilateral treaties relating to patents, trademarks and industrial designs were tabled in January at the start of a process that could end with Canada ratifying them, implementing them and moving into line with international best practice. The question is, why now?

Free trade

One answer could be that Canada and the EU are close to completing a free trade deal, and major changes to Canadian IP law are expected to be introduced as a result of the agreement.

Asked about the impact of a Canada-EU trade deal on Canadian IP reform, Laporte says: “Canada's prosperity is linked to economic opportunities beyond our borders. Given our historical and cultural ties with Europe, the EU is an ideal partner for a comprehensive trade agreement.

“All Canadians stand to benefit from increased trade and the success of the Canadian economy is closely linked to our trade with other countries.”

Another answer to why the five treaties were tabled in parliament in January could be connected to the continuing negotiations on the Trans-Pacific Partnership, the proposed multilateral trade deal in which IP is a central talking point. However, secrecy has been the order of the day there, as WIPR reported in June, so it is not surprising that Laporte refuses to be drawn on how it might affect IP in Canada.

“Canada is committed to deepening our trade ties in the dynamic and fast-growing Asia-Pacific region, while strengthening our traditional partnerships in the Americas. However, I cannot speculate on the outcomes of a trade agreement that is under negotiation,” he says.

Better practices

If Canada were to ratify the treaties, for whatever reason, there is no doubt the impact would be transformational. Laporte explains that the treaties are designed to simplify and harmonise administrative practices among regional and national IP offices, specifically:

• The Madrid Protocol allows for the registration of trademarks in multiple jurisdictions through a single international application;

• The Singapore Treaty establishes application standards and rules related to procedures of national trademark offices;

• The Nice Agreement governs the Nice Classification;

• The Patent Law Treaty establishes application standards and rules related to procedures of national patent offices; and

• The Hague Agreement allows for the protection of industrial designs in a number of countries through a single international application.

There are plenty of other changes on the way in Canada. For example, the government has introduced amendments to the Trademarks Act that lawyers from Dentons Canada LLP described in a report, published in August, as “the most significant changes to Canada’s trademark laws in modern history”. Once the regulations are in place, “the landscape of Canadian trademark law will be changed dramatically”, they added.

“All Canadians stand to benefit from increased trade and the success of the Canadian economy is closely linked to our trade with other countries.”

Laporte agrees the changes are highly significant. “They are very important for Canadians who want to move their innovations and brands into the global market. And increasingly, Canadians are doing just that: from 2002 to 2012, trademark applications by Canadians abroad more than doubled from 16,787 to 37,906,” he says, quoting WIPO data.

“The changes being introduced will align Canada’s IP system with its international counterparts by allowing Canada to join the Madrid Protocol, the Singapore Agreement and the Nice Agreement. This will support Canadian businesses that want to take advantage of the growth opportunities offered by foreign markets as the Madrid Protocol helps businesses register their trademarks in multiple jurisdictions with a single application, reducing red tape, uncertainty and costs.

“By acceding to the Singapore Treaty, Canada will be aligning its administrative framework with those of its main trading partners. This will make Canada a more attractive destination to foreign investors seeking to establish a presence in the Canadian marketplace,” Laporte says.

New copyright act

Copyright is another area in which the law is moving fast. Most elements of the Copyright Modernization Act came into force in November 2012, while others will not be introduced until next year. “Our government’s recently renewed copyright act reflects the importance of creativity, innovation and culture by introducing new rights and protections for artists and creators,” says Laporte.

The act introduced, among other changes, new tools for copyright owners to protect their material online and ensure they are fairly compensated for their efforts.

“The government recognises that the most effective way to stop online copyright infringement is to target those who enable and profit from the infringements of others,” says Laporte.

“The new legislation provides a tool for copyright owners to target the enablers of online infringement, so that they can take action in a court against those who wilfully and knowingly enable copyright infringement online, such as operators of websites that facilitate illegal file-sharing.”

To further discourage illicit file-sharing, the act established a ‘making available’ right that allows copyright owners the right to control the release of their work online, and formalises the current voluntary ‘notice-and-notice’ regime used to notify subscribers of possible copyright infringements at their internet address.

“Together, these measures help clarify that the unauthorised sharing of copyrighted material over peer-to-peer networks is unacceptable,” says Laporte.

On enforcement, Canada’s Competition Bureau released revised IP enforcement guidelines for consultation in the spring of this year. As the bureau moves forward, Laporte says, CIPO will be working closely with it on files such as this as part of a memorandum of understanding (MOU) signed this year.

“The objectives of the MOU are to gain a better understanding of the connection between competition and IP law, while sharing knowledge and expertise to help both of our agencies to reach their individual and common goals,” he adds.

Counterfeit goods

On counterfeit goods, the USTR had both good and bad comments to make about Canada in its latest Special 301 Report. “Regarding border enforcement issues, Canada re-introduced the Combating Counterfeit Products Act in October 2013 to strengthen IP rights enforcement. The bill included provisions that would provide ex-officio authority to Canadian customs officials to seize pirated and counterfeit goods at the border,” the report noted.

“The US supports Canada’s commitment to address the serious problem of pirated and counterfeit goods entering our highly integrated supply chains,” it added, but then urged Canada, as it proceeds with this legislation, “to expand its scope to provide authority for its customs officials to take action against such goods in-transit”.

Laporte says the bill was tabled to address the problems associated with counterfeit and pirated goods, amending the Copyright Act and the Trade-marks Act to add new civil and criminal remedies and new border measures in both acts to strengthen the enforcement of copyright and trademark rights and to curtail commercial activity involving infringing copies and counterfeit trademarked goods.

The bill has not yet been passed into law and is still being studied by parliament but Laporte has no doubt that, in IP overall, progress is being made. “Canada’s IP laws are strong. Continuous improvement of our laws, regulations and practices is the norm as we look to increase innovation and promote economic growth,” he says.