Several decisions involving the impact of online commerce on trademark use were issued during 2013. In Canada, use is fundamental to trademark acquisition, enforcement and maintenance. However, for online businesses that are accessible to Canadians, but have no bricks-and-mortar presence, the law remains unclear about what level of Canadian interaction is sufficient. While merely being online does not permit a business located out of Canada to claim use, the courts are still grappling with how businesses must meet a use-in-Canada threshold (eg, by setting prices in Canadian dollars, offering delivery to Canada or having Canadian contact details). This will remain a topic of interest as internet commerce continues to grow.
The Canadian government also introduced the Combating Counterfeit Products Act (Bill C-8) which, when passed, will set up a procedure whereby copyright and registered trademark owners may ask for assistance in detaining counterfeit goods. In addition, it sets out new criminal remedies for trademark infringement. The bill also provides for the registration of additional non-traditional marks (eg, colour, taste, texture and smell) with proof of acquired reputation. Finally, as part of the Canada Europe Trade Agreement, the government has committed to better protection against counterfeiting and to recognising new geographic indications in Canada.
In addition, the government will likely move forward with other steps designed to harmonise Canada's trademark system with that of other countries. Some of the most likely changes include accession to international treaties such as the Madrid Protocol and the Singapore Treaty. Consideration has already been given to the changes that will be required to accommodate those statutes (eg, new filing procedures and classification of wares and services). More interesting is how these treaties may change the current focus on use as a requirement for registration and maintenance of trademarks in Canada, and whether access to these systems will result in more Canadian businesses seeking trademark registrations in Canada and abroad.
Another issue that has caught the attention of trademark lawyers is the impact of the Quebec government's insistence upon French language on signage displayed in Quebec. Many rights holders feel that their trademark registrations permit them to use the brand name alone on signs, whereas the Quebec government has asked for additional generic names in French (eg, café, magasin or bistro) to be displayed. A challenge to this requirement has been launched and is being keenly watched by many international brand owners.
This article first appeared in World Trademark Review magazine issue 47, published by The IP Media Group.
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