Sunday, March 30, 2014

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.