Publications

On January 27, 2014, the parliamentary secretary of the Canadian Minister of Foreign Affairs tabled five treaties in the House of Commons dealing with intellectual property, of which three relate to trademarks.These three treaties on trademarks are as follows: The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the "Madrid Protocol") The Singapore Treaty on the Law of Trademarks The Nice Agreement Concerning the International Classification of Goods and Services for the Registration of Marks (the "Nice Classification")If ratified by Canada, these three treaties dealing with trademarks would allow Canada to align itself with most of its trade partners, and would provide definite benefits to Canadian trademark owners.The Madrid Protocol would enable Canadian trademark owners to file applications for international registration via the Canadian Intellectual Property Office. This would simplify procedures, allowing for the filing of a single application that would be effective in many contracting countries to the Madrid Agreement or Madrid Protocol. Indeed, from the date of the international registration, the trademark would be protected in each of the designated countries as if an application for registration had been filed directly with the official trademark office in each of these countries.The purpose of the Singapore Treaty on the Law of Trademarks is to simplify and standardize the formalities and procedures for the administration of trademarks. It provides for more user-friendly and harmonized international procedures that would save time for trademark registration applicants.As for the Nice Arrangement, it would provide for the adoption by Canada of the Nice Classification, which is already in use by most countries for trademark registration.Most countries that have adopted the Nice Classification require filing fees for applications calculated on the basis of the number of international classes of goods and services covered by the application. However, in Canada, it is possible that a single filing fee will set, even for multi-class applications.There is no known timetable for the ratification of these treaties, but we will continue to monitor the process and keep our clients informed of further developments.

The production and circulation of counterfeit products have been an economic and social problem for some time. Not only can such products pose a safety risk to consumers who use them, counterfeit products also lead to considerable lost income for legitimate businesses, decrease consumer confidence in the marketplace and are often used to finance organized crime. The retail value of counterfeit goods seized by the RCMP increased from $7.6 million in 2005 to $38 million in 20121. Although it is generally considered imperative to set up means of eradicating this problem, Canada’s current legal system does not provide the necessary tools to do so. In a concrete attempt to tackle this problem, on March 1st the federal government tabled Bill C-56, An Act to Amend the Copyright Act and the Trade-marks Act and to Make Consequential Amendments to Other Acts, known under the short title the Combating Counterfeit Products Act ( the “Bill” ). As its name implies, the Bill proposes changes to the current legislation to strengthen the rights of copyright holders and trade-mark owners. Among other things, the Bill proposes specific measures to introduce additional civil and criminal actions as well as new border measures.The additional powers given to border authorities no doubt constitute the most concrete measure introduced by the Bill. Customs officers would be able to seize suspicious products as they are being imported into Canada, with a view to potential action under the law. These border measures will not apply to the import or export of goods by individuals for personal use.The Bill also allows a copyright holder or trade-mark owner to file a request for assistance with the Minister to facilitate an action involving products that are imported or exported illegally. In particular, a customs officer with reasonable grounds to suspect that products retained under his or her authority are banned from being imported or exported will have the discretion to provide copyright holders or trade-mark owners who file a request for assistance with samples of the goods and information about the goods, which could be useful in taking civil action against infringers.Furthermore, the Bill introduces new criminal offences for trade-mark counterfeiting that are analogous to existing offences in the Copyright Act. The Bill also creates new criminal offences with respect to the possession and import and export of infringing copies or counterfeit trade-marked goods, packaging or labels.The changes made by the Bill to the Trade-marks Act are quite technical but demonstrate the legislator’s intention to evolve the law to consider changing market realities. The Bill introduces the possibility of registering so-called “non-conventional” trade- marks (sounds, odours, tastes and textures). Other changes are designed to simplify and clarify certain notions in the current legislation.The Bill is an ambitious initiative by the federal government. It will be interesting to follow its progress and see what practical effects it will eventually have._________________________________________ 1 Industry Canada – Backgrounder – “Combating Counterfeit Products Coming into Canada”, March 1, 2013, http://www.ic.gc.ca/eic/site/064.nsf/eng/07280.html.

Employment Conditions of Foreign Workers Share Ownership : an Overview Certificate of Intellectual Property Pertaining to Software

This publication was authored by Luc Thibaudeau, former partner of Lavery and now judge in the Civil Division of the Court of Québec, District of Longueuil. The title of this newsletter gives a good summary of the explanatory notes that serve as an introduction to Bill 14, entitled An Act to amend the Charter of the French language, the Charter of human rights and freedoms and other legislative provisions (the “Bill”). The legislator is concerned that English is being used systematically in certain workplaces. The Bill was tabled on December 5, 2012 and the proposed amendments are designed to reaffirm the primacy of French as the official and common language of Quebec.

Quebec tax holidays for foreign researchers The Amazon.com judgment : The patentability of the one-click Distinguish yourself! Online downloading in the sights of american justice

Hyperlinks and defamation: a Judgment that Clarifies the Rules The Myriad Case: Are DNA Molecules Patentable or Not? Lessons Drawn From the Supreme Court's Decision in Masterpiece: Register Your Trade-Marks!

If your trademarks and business names contain letters with accents and you are the owner of domain names linked with them, it is important to familiarize yourself with the following.With a view to offering owners the possibility of registering domain names that comply with French spelling, the Canadian Internet Registration Authority (the « CIRA »), the organization that manages the register of .ca domain names in Canada, plans to implement domain names containing characters peculiar to the French language.

On June 20, 2011, in Singapore, ICANN (Internet Corporation for Assigned Names and Numbers), the global co-ordination body for Internet addresses, approved the new program for the thematic extension of gTLDs. This program will certainly lead to significant growth in the number of domain names (gTLDs) on the Internet. This change will affect all owners of trademarks who will have to weigh the pros and cons and opportunities and risks they will face under the new program, which will be officially launched on January 12, 2012.

Technology Licences in the Event of Bankruptcy New Quebec Business Corporations Regime The Shareholder Agreement: The ”Specifications” of the Private Corporation Shareholder

This publication was authored by Luc Thibaudeau, former partner of Lavery and now judge in the Civil Division of the Court of Québec, District of Longueuil. Disclosure Rules Applicable Prior to the Sale of Additionnal Warranties Attornment of Jurisdiction Clause set Aside in Bankruptcy Proceedings What to do When Your Lessee Declares Bankruptcy

SMEs are not Immune from Class-Actions Suits in Competition Law SMEs and Trade-Marks Dividing up Corporate Shares in the Event of Divorce, Separation from bed and Board, or Dissolution of a Civil Union