legistlation

The Utility of Recent Force Majeure Amendments to Canadian Trademark Law

By In CIPO, Legislation, Trademark Practice

In 2014 and 2015, Canada passed a number of amendments to its Trademarks Act allowing for extensions of time due to unforeseen circumstances. These amendments were driven, in part, by the Northeast Blackout of 2003, in which millions of people (including 10 million in Ontario) lost power for two or more days. As a result, some IP practitioners were unable to meet deadlines falling on those days – prompting calls for amendments allowing extensions for “force majeure” events to the Patent Act, the Trademarks Act, and the Industrial Design Act.

Although these amendments were enacted more than a decade after this blackout, these “force majeure” provisions have become incredibly relevant in the context of unprecedented challenges posed by the global COVID-19 pandemic.

The words “force majeure” do not appear in the Canadian Trademarks Act. However, at least three provisions now afford trademark owners and the Registrar of Trademarks some flexibility in addressing the effects of so-called “acts of God” under Canadian law—events beyond a party’s control which make performance of their obligations impossible. The relevant provisions:

  • allow for an extension of time to claim priority for a period of up to seven days in certain circumstances (section 34(5));
  • allow for an extension of time to pay renewal fees for a period of up to seven days in certain circumstances (section 46(5)); and
  • allow the Registrar to designate time periods in which deadlines are automatically extended to the next day outside of the time period, on account of unforeseen circumstances and when it is in the public interest to do so (section 66(2)).

This last provision came into force on November 5, 2018. Less than two years later, the Registrar exercised this power to designate March 16, 2020 to March 31, 2020 as days during which any deadline is automatically extended—in this case, to April 1, 2020. The Registrar may further extend this period, but at the time of writing we have no confirmation in this regard.

Parties wishing to rely upon the prior two provisions ought to refer to the Canadian Intellectual Property Office’s Practice Notice “Extensions of time due to force majeure for priority and renewal”, published June 17, 2019. Notably, the Practice Notice makes specific reference to “virus/bacterial epidemic outbreaks” as an example of a potential force majeure event.

Combating Counterfeit Products Act Receives Royal Assent

By In Branding, Counterfeit goods, Famous Marks, Foreign Protection, Legislation, Protection & Enforcement

On December 9,2014 Royal Assent was given to Bill C-8, the Combating Counterfeit Products Act. The intention of Bill C-8 is to give the government and holders of trade-marks and copyrights new mechanisms for enforcement, along with substantial remedies, in order to combat counterfeit and black-market goods. Before the introduction of Bill C-8, Canada had been criticized for not having meaningful policies to combat the global problem of counterfeit trafficking which flowed across Canadian borders.

Specific enforcement mechanisms contained in Bill C-8 include:

  • new civil prohibitions under the Trade-marks Act and Copyright Act giving rights holders the ability to start civil actions against those who infringe their trade-mark or copyright by possessing, manufacturing, distributing or trafficking goods for commercial purposes;
  • new criminal offences under the Trade-marks Act and Copyright Act for possessing, manufacturing, distributing or trafficking counterfeit goods for commercial purposes;
  • new provisions giving customs officials ex officio power to independently seize and detain suspected counterfeit goods. This includes the ability for copyright and trade-mark owners to file a “request for assistance” with customs officials to increase the information available to customs regarding possible counterfeit goods.

For a deeper review of the changes contained in Bill C-8, please see our previous post written in March 2013 when the bill was first introduced as Bill C-56.

While the Bill has obtained Royal Assent, it is only partially in force. Changes currently in force include:

  • the introduction of the new criminal provisions;
  • the deletion of section 7(e) of the Trade-marks Act; and
  • amendments to Section 20 of the Trade-marks Act dealing with infringement.

The majority of the amendments to the Trade-marks Act and Copyright Act, including the provisions relating to importation and exportation and ex officio powers of custom officials, will be brought into force by regulation. It is not clear when this will occur. However, it is thought that implementation will be in step with Bill C-31, the Budget Implementation Act, which is also waiting to come into force sometime in 2015 early 2016 and contains further significant amendments to the Trade-marks Act.

We will keep you updated as coming into force dates are announced and these legal tools become available to trade-mark and copyright owners.