Canada’s new IP Strategy proposes some important reforms to the trademark system, as Mark Schaan, Director General, Marketplace Framework Policy Branch, Innovation, Science and Economic Development, tells Ed Conlon.
Canada’s government has pledged to invest CA $85.3 million (US $66.6 million) over the next five years to help businesses, creators, entrepreneurs, and innovators better understand, protect, and access their IP. The investment is part of a new Intellectual Property Strategy, which was released by Navdeep Singh Bains, the Minister of Innovation, Science and Economic Development, in April.
Mark Schaan, Director General, Marketplace Framework Policy Branch, Innovation, Science and Economic Development, and his team of policymakers have spent the past two-and-a-half years getting the Strategy ready, and, he says, it shows that the government is more committed than ever to taking IP seriously.
“It’s the first of its kind for Canada: the Canadian government is committed to reinforcing the importance of IP in the modern economy, ensuring the IP regime is balanced and supportive of our goals,” says Mr. Schaan.
The Strategy is divided into three pillars: IP awareness, education, and advice; strategic IP tools for growth (including expedited dispute resolution); and IP legislation.
It covers a range of issues across all forms of IP, including some important legislative changes in the trademark field. However, just like any legislation, these amendments still require approval from lawmakers.
Mr. Schaan explains that the main reforms to trademarks include new opposition and invalidation grounds concerning bad-faith use. In addition, trademarks are required to be used within three years of registration in order to enforce them. After three years, the Canadian Intellectual Property Office will be able to remove marks from the register based on lack of use.
Four years ago, amendments to Canada’s Trade-marks Act, which will allow Canada to join the Madrid Protocol and the Singapore Treaty, removed an administrative requirement stipulating that parties must provide a written “declaration” of use before they can register a trademark. These amendments are expected to come into force sometime next year. Canada’s IP Strategy provides additional measures to ensure that the trademark register does not end up being cluttered by marks that are not being used properly—a practice sometimes known as “trademark squatting.”
“The way we are dealing with this issue of trademark cluttering and squatting is relatively novel in the international space,” says Mr. Schaan.
“I’m not aware, from an international benchmarking position, of others who have looked at it in this way. There are other mechanisms, such as the U.S. domestic application system, that require use and submission of samples, but in terms of being able to take trademarks off the roll and provide tools to declutter, this is relatively novel.”
Mr. Schaan adds that the reforms provide two clear benefits for trademark owners, the first being a “well-curated and manicured trademark registry which improves the value and efficacy for those rightfully holding trademarks and who are not looking to exploit the system.” Quite simply, “the value of a Canadian trademark goes up,” he says.
“The way we are dealing with this issue of trademark cluttering and squatting is relatively novel in the international space.”
Second, he says, the notion that a party “might be up against noxious behavior of someone looking for a quick settlement by threatening an unused trademark can give trademarks a bad rap,” so the changes improve the overall reputation of trademarks.
Mr. Schaan says practitioners should be aware of the Strategy as a whole, “because it recognizes we have taken IP seriously and that Canada is a good place to be practicing in the realm of IP.” The government is now trying to raise awareness about the initiative.
There have been challenges in the process, he says, including trying to look at the myriad ways that one can exercise and leverage IP in a strategic way in the service of innovation and economic growth. In particular, drawing on and responding to the more than 200 Canadians who participated in the consultations that led to the Strategy was a challenge.
With the Strategy now laid out, Mr. Schaan’s work on the project is only halfway complete. He and his team will have to steward the implementation and “pass the baton” to those responsible for implementing the new tools, as well as Canada’s lawmakers, who will ultimately need to sign off on the legislative changes.
“As with all areas of policy, we will also continue to monitor progress to ensure we stay current with trends,” he says.
As Mr. Schaan notes, the Strategy has essentially made a commitment to legislation, but the specific timeline for that has not yet been released.
However, Mr. Schaan emphasizes, the government is “very committed to aggressively moving forward with implementation. We need to ensure the Strategy is implemented quickly and well."
INTA, INTA 2018, Mark Schaan, trademark, Canada, Navdeep Singh Bains, IP awareness, education