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22 | LEXPERT • December 2015 | www.lexpert.ca INTELLECTUAL PROPERTY to filing formalities, additions and incorpora- tions by reference, notification of unpaid fees, the reinstatement process, restoration require- ments, intervening rights and transfers. e changes to the Industrial Design Act modernize the legislation's language and amend provisions relating to the contents of registration applications, the requirements for a registrable design, the grace period for filing and the term of an exclusive right for a design. Six months earlier, in June 2014, Bill C-31 had received Royal Assent. Despite opposi- tion from most – but not all – of the country's intellectual property Bar, it introduced fundamental changes to trade-mark law. e changes brought Canadian law into conformity with international agreements such as the Madrid Protocol, the Singapore Treaty on the Law of Trademarks and the Nice Agreement. Most significantly, the changes remove previous use of a trade- mark, in Canada or elsewhere, as a requirement for registration. ey align Canada with other jurisdictions, including the EU, where trade-mark rights are based on registration alone. e upshot of the amendments is that anyone will be able to register a trade-mark whether or not they have a legitimate commercial application in mind for the mark, and they may do so without the necessity of showing prior use. "e amendments simplify the trade-mark application process by eliminating red tape for businesses and aligning Canada with its major trading partners," an Industry Canada spokesman said in an email. e new system does allow legitimate users to oppose an appli- cation for a mark. ey can also attack a trade-mark registration on the basis of non-use, but only three years aer a mark has been registered. Because the amendments allow registration with no details of use, however, it will be far more difficult and expensive to assess the viability of a decision to oppose a new application or move to expunge one. In the 1980s, several Latin American countries initiated registration systems. Almost immediately, speculators moved to register luxury brand names, like Ralph Lauren and Polo, forcing brand owners to either commence lengthy and costly proceedings to expunge the trade-marks, or to negotiate the purchase of the mark from the speculators. Otherwise, the Comprehensive Economic and Trade Agreement (CETA) between Canada and the EU, on which agreement in principle was announced in 2014, will improve Canadian protec- tion of pharmaceutical innovators' patents — but not narrow the gap entirely. e three key areas in which Canadian protections lag behind those of other developed nations, such as the US and the UK, are patent-term restoration, which extends the life of patents to account for mandatory regulatory delays; data exclusivity, which limits the period during which generics may use innovator data for drug approval applications; and rights of appeal, which Canada's Patented Medicines (Notice of Compliance) Regulations, used to resolve issues between innovators and generics, grants only to generics. As for Canada's much-maligned doctrine of "utility" (discussed in more detail later in this article), Hitchman maintains that other countries have similarly problematic approaches. "It's just that those approaches have different names, like 'enablement' in the US," she says. However that may be, those supporting greater international harmonization of Canada's IP laws are optimistic that things are gradually lining up. "Canada is at least going in the right direction, so we're not the outliers we once were," says Glen Bloom of Osler, Hoskin & Harcourt LLP in Ottawa. "But there will always be those who argue that we're not going far enough and others who say we're going too far." Bill C-59, which received Royal Assent on June 23, 2015, repre- sents the most recent legislative change in Canada's IP evolution. Its most significant IP component provides a statutory privilege for confidential communications with patent and trade-mark agents. Similar provisions exist in Australia, New Zealand, the United Kingdom, France and Sweden, as well as in the proposed regulations for the European Union's Unified Patent Court. Bill C-59 also remedies Canada's historic inflexibility regard- ing the loss of rights for failure to meet deadlines, particularly force majeure events like floods, ice storms and power outages. e legislation allows the Canadian Intellectual Property Office to extend key deadlines in the face of force majeure events. From a copyright perspective, Bill C-59 brings Canada onside with the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who are Blind, Visually Impaired or Otherwise Print Disabled. It also extends protection of sound recordings and performance from 50 to 70 years aer the first recording release. BILL C-43, which received Royal Assent in December 2014, is also significant. Among other things, the Economic Action Plan 2014 Act, No. 2, went a long way to harmonizing the Patent Act and Industrial Design Act with the Patent Law Treaty and the Hague Agreement Concerning the International Registration of Industrial Designs. e patent changes came more than 14 years aer Canada undertook adherence to the Patent Law Treaty, which was adopted in Geneva in June 2000 by 36 countries, including the US and the EU. e Patent Law Treaty seeks to simplify and harmonize administrative practices among national IP offices with respect to the patent application process. e domestic amendments relate "WE'RE NOT outliers at all. Some of our laws may be different, but that's not the same as being an outlier. To suggest we're anti-patentee, for example, is absolute nonsense." Carol Hitchman Gardiner Roberts LLP

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