The End of the Great Canadian Trade-mark Hyphen – and other Consequential Changes

The hyphenated spelling of “trade-mark” had become something of an – ahem – trade-mark for Canada. It was a bold proclamation of independence and innovative thinking when Bob Kelly - an arcane and erudite veteran of the Department of Justice from a bygone era – came up with this bright idea. That hyphen was inserted in 1993 and served a useful purpose, since many people were confused between the American/WIPO spelling ("trademark") and the British spelling ("trade mark"), which the Brits still use.  After all, isn’t the purpose of trade-marks law to avoid confusion? Canada had earlier used the British spelling. So - we are now following the American lead...Hopefully, this capitulation will appease the Americans and they will back down on term extension, prevention of parallel imports, repealing fair dealing, jail terms for petty infringers, ACTA implementation, the TPP and other aggressive efforts. As if!

Seriously, the Government has introduced numerous changes to the venerable Trade-marks Act (enjoy the spelling while you can) – above and beyond removing the hyphen from "trade-mark". These numerous changes to the Trade-marks Act are hidden in plain sight in the omnibus budget implementation Bill C-31 and they can be found here.

Fortunately, Rob Kittredge has gone to the trouble of preparing both a consolidated and redlined version that can be found on his blog, here, along with a short discussion by him, including his thoughts on the process of including these changes in an omnibus budget bill. All Canadian IP practitioners owe Rob a big vote of thanks for making these changes transparent and doing this so quickly over the weekend.

In days to come, I may and others no doubt will discuss the changes and how the bill is likely to be handled – and whether committee hearings should be undertaken. Along with Bill C-8 - the anti-counterfeiting legislation that goes well beyond what is needed to address counterfeiting and which had only perfunctory committee hearings - we are about to see a massive revision of the one piece of Canadian IP law that arguably needs little or no revision and which has worked really well since 1954, when it was introduced after a model consultation process led by the late John Osborne, an eminent practitioner in his day. No - I don't remember this first hand. But I heard a lot about it from the late Gordon Henderson and Bill Hayhurst, who both thought very highly of the legislation and the way that it was developed. Unfortunately, the days when such a process would work effectively are probably gone forever, given the role of lobbyists and well-funded trade associations.

HPK

Riding through the Glen to the Supreme Court of Canada?

Readers may know about the recent decision of the Federal Court of Appeal concerning Glenora Distillers, which is a Canadian company located in located in Glenville, next to the community of Glenora Falls, in Nova Scotia, Canada. It makes a “single malt whisky” called GLEN BRETON and has marketed this product as “being like a single malt Scotch in every thing but name.”

Glenora was taken to court by the powerful Scotch Whisky Association (SWA), which doesn't like the use of the word GLEN in association with whisky, unless it is used with single malt Scotch whisky. The SWA invoked the rarely used s. 10 of the Trade-marks Act which provides that:

Where any mark has by ordinary and bona fide commercial usage become recognized in Canada as designating the kind, quality, quantity, destination, value, place of origin or date of production of any wares or services, no person shall adopt it as a trade-mark in association with such wares or services or others of the same general class or use it in a way likely to mislead, nor shall any person so adopt or so use any mark so nearly resembling that mark as to be likely to be mistaken therefor.

The SWA succeeded before Justice Harrington in the Federal Court, but this decision was reversed on appeal - and quite properly so in my view. S. 10 simply doesn't apply in this situation. Justice Sexton of the Federal Court of Appeal correctly noted that many of the SWA members’ trade-marks containing GLEN would be in jeopardy if SWA’s argument on s. 10 had actually prevailed.

It is therefore somewhat surprising that the SWA has now sought leave to appeal the FCA decision to the SCC. It will be, frankly, even more surprising if they get leave. Had the FCA gone the other way, it might well have been an issue of “public importance” because Canadian trade-marks law would have become quite unpredictable. However, the FCA reached the conclusion that most IP lawyers would have predicted and the law on s. 10 seems just fine as it stands now and always did.

HK