Overhaul of Intellectual Property Legislation

AuthorAlan Macek
DateJanuary 06, 2015

In a series of initiatives, legislation addressing intellectual property is being amended. The Patent Act, the Trade-marks Act, the Copyright Act, the Industrial Design Act and the Plant Breeders’ Rights Act have been amended or are about to be amended. While most of the changes are procedural rather than substantive, the changes will likely have a lasting effect on Canada’s role in the international intellectual property system.

Many of the changes effect the filing requirements in Canada to standardize or integrate the process with international systems. For example, for trademarks, the Madrid Protocol allows an international trademark application to be filed which has certain effects in Canada. Similarly, for industrial designs, the Hague system permits an international design application to be filed.

Trade-marks Act

The Trade-marks Act (soon to be the Trademarks Act) was amended twice in 2014. First, as part of an omnibus budget bill, Bill C-31 in June and then in December by Bill C-8, the Combating Counterfeit Products Act.

Bill C-31 introduces significant changes to the requirements for filing trademarks in Canada, including with classifications and ‘use’ required in Canada. The changes are directed to implementing the Nice Agreement, Singapore Treaty, and the Madrid Protocol.

The recently passed Combating Counterfeit Products Act introduces criminal enforcement provisions for counterfeit goods and new border enforcement measures. Many of these changes relate to provisions of the Anti-Counterfeiting Trade Agreement signed in October 2011, although not in force.

While some of these changes are already in force with the passing of C-8, most changes will require implementing regulations and an order in council to come into force.

Copyright Act

Bill C-8, the Combating Counterfeit Products Act mentioned above, also includes changes to the Copyright Act, including to export and import provisions and border enforcement measures.

The Copyright Act was significantly amended in 2011 with the Copyright Modernization Act which related, in part, to the WIPO Copyright Treaty and WIPO Performance Phonogram Treaty. In August 2014, these treaties officially came into force in Canada, triggering entry into force of certain sections of the Copyright Modernization Act.

Also, the “Notice and Notice” provisions of the Copyright Act relating to copyright material hosted by Internet Service Providers (ISPs) will come into force on January 2, 2015.

Patent Act

Various...

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