No Excuses. Canada Must Deliver New Copyright Legislation To The International Community

Hon. Jean Jacques Blais, P.C., Q.C., June 2011

Now that Stephen Harper has achieved majority with an unexpected May 2nd win, there is no reason why the long awaited amendments to Canada’s Copyright legislation should not be passed into law.  Calls for the reintroduction of the legislation that died with the dissolution of the 40th Parliament have come from many quarters including from John Manley, President of the Canadian Council of Chief Executives.  In his recent letter to the Prime Minister, the former Liberal Deputy Prime Minister urges the new government to “expeditiously” get on with the task.  Readers will recall that the issue of modernization of Canada’s Copyright regime was a top of the list issues for US President Obama when he met with the then minority government leader Harper in February of this year.  The American concern was that Canada was seen as a copyright pirate’s lair responsible for vast sums being lost to the U.S. entertainment industry.  Canada’s advanced communications capacity, its sophisticated technology and the integrated North American English speaking market where cultural creation and its consumers know no borders present a significant challenge to our legislators.  The pressure from the Americans has not abated and the expectations are for fast action.

The Conservative government should not succumb to the temptation of rushing Parliament to a solution to make the pain go away. No matter what solution is advanced, they will not be able to satisfy everyone.  Indeed efforts to change the law, which began under a Liberal administration more than a decade ago, have all been unsuccessful. As the Minister of Industry, Tony Clement, said when he introduced the latest attempt in the last Parliament, the main challenge is finding an equitable balance “between consumers who want access to material and artists and innovators who want to be and should be rewarded for their creativity”.  That balance is difficult to achieve and for Canada the difficulty is made more acute because of the need to protect Canadian artists as well as Canadian consumers while answering American concerns.

The new majority government should take as much time as they need to bring forward progressive legislation in a field that is perhaps the most dynamic and fast changing of any in the generation of intellectual value added. The long legislative process to which amendments to the existing legislation has been put should not be seen as a negative.  On the contrary, a lot of thought has gone into amending the Copyright Act from the very beginning and we should take full advantage of the wisdom that the process has produced.  Surely the evidence before the parliamentary committee in three attempts at passage will have provided many nuggets of wisdom.

Having trailed our major trading partners in the development of modern copyright laws for many years, we are in a position, if we are wise and judicious in our choices, to set the new standard of international copyright law. In doing so we will be serving the national interest through the encouragement of Canadian cultural product while satisfying our international obligations including answering American concerns.

Protecting Plant Varieties in Canada

Susan Chao, June 2011

Protection for new plant varieties has been available for just over twenty years in Canada.  As new technologies are sought for increasing and improving crop production, Plant Breeders’ Rights help to encourage such innovation by rewarding plant breeders with exclusive rights to sell, and to produce for sale, the reproductive material of their new plant variety. 

Plant Breeders’ Regime in Canada - Differences
Canada is a member country of the International Union for the Protection of New Varieties of Plants (UPOV).  Plant breeders and applicants should be aware, however, that Canadian laws do not currently follow the latest version of the UPOV Convention and therefore there are some differences in the protection afforded to plant varieties in Canada. 

First, there is no grace period for disclosure of the reproductive, or propagating, material of plant varieties.  To obtain a grant of a Plant Breeders’ Right in Canada, the propagating material of a new plant variety must not have been previously sold in Canada before filing the application with the Plant Breeders’ Rights Office.  The definition of “sell” under the Plant Breeders’ Rights Act is rather broad and includes:

“agree to sell, or offer, advertise, keep, expose, transmit, send, convey, or deliver for sale, or agree to exchange or to dispose of to any person in any manner for a consideration.” 

In addition, the Act defines “advertise”, in relation to a plant variety, even more broadly to include bringing to the notice of the public any communication with the intention of promoting the sale of the propagating material of the plant variety. 

If the plant variety was sold outside of Canada, then there is a six- year grace period for woody plants and their rootstocks, while other varieties have a four-year grace period before filing.

Secondly, the Plant Breeders’ Right lasts for eighteen years from grant.

Furthermore, the protection afforded in Canada does not extend to conditioning (cleaning and seed treating) and stocking (saving, storing or possessing) the propagating material. 

Eligibility for Protection and Filing Requirements

In order to be eligible for protection in Canada, the new plant variety must be distinct, uniform and stable.  A variety is distinct if it has one or more characteristics that are measurably different from all other varieties which are known to exist within common knowledge at the time of filing the application.  A variety is uniform when the relevant characteristics are homogeneous, allowing for variation that is predictable and commercially acceptable.  Finally, a variety is stable when it is true to its description over successive generations.

The plant breeder, its employer, or a legal representative of same can apply for a Plant Breeders’ Right, provided they are citizens or residents of a member country of the UPOV.  Foreign applicants filing into Canada will need to appoint a Canadian agent.  In either case, an assignment and/or an authorization form must accompany the application.

Other requirements for the application include a description of the origin and breeding history of the plant variety, the manner in which and the location of where the propagating material will be maintained, a distinctness statement and a statement regarding the uniformity and stability of the variety.  The plant variety must be associated with a proposed name, or denomination, as chosen by the applicant and reviewed by the Examiner.  Apart from vegetatively propagated crops, samples of the propagating material are required.  Documents supporting the distinctness of the variety, such as photographs and a detailed description of the characteristics, are needed.  The results of comparative tests and trials to demonstrate that the plant variety is a new variety are also required.

Procedural Considerations to Obtain Protection   

The examination process involves a formal review for compliance with the Plant Breeders’ Rights Act and Regulations, and a site examination of trial results comparing the variety with reference varieties.  Trials must be done in Canada and scheduling for the site examination begins every May 1 for the tests taking place during the summer of that year.  It may be possible to have this testing completed through the purchase of foreign tests and trials from Plant Breeders’ Rights Offices in UPOV member countries if accepted by the Canadian Office.  The description of the variety is generated during the examination phase of the process from the data collected from the trials in Canada.

Publication of the description of the variety in the Plant Varieties Journal allows for third parties to oppose.  If there is no opposition, then a Certificate of Registration is issued with the denomination as approved by the Commissioner.  Maintenance fees are due annually following the grant of the Plant Breeders’ Right.

Consider Plant Breeders’ Rights

Although there may be differences in the extent of protection in Canada under the Plant Breeders’ Rights regime, with Canada’s agricultural tradition, Plant Breeders’ Rights should not be dismissed as an option to provide the benefits of access to foreign varieties and the development of Canadian innovation. 

Newsflash: Supreme Court Decision

May 27, 2011  -  Supreme Court Decision Clarifies Relationship Between Common Law and Registered Trade-mark Rights

MASTERPEICE INC. v. ALAVIDA LIFESTYLES INC.

Background and Judicial History
Masterpiece Inc. and Alavida Lifestyles Inc. (“Alavida”) are both involved in the retirement residence industry.

Masterpiece Inc. claimed to have used unregistered trade-marks since 2001, all of which contained the word "masterpiece", and some of which contained the word "living". On December 1, 2005, Alavida applied to have the mark "Masterpiece Living" registered on the basis of proposed use. The application for the mark was unopposed, subsequently allowed and registered. In 2006, Masterpiece Inc. applied to register the marks, "Masterpiece" and "Masterpiece Living". Masterpiece Inc.’s applications were denied by the Canadian Intellectual Property Office in September 2006 on the basis that they were confusing with Alavida’s previously submitted application for the mark "Masterpiece Living". Thereafter, Masterpiece Inc. brought an application to the Federal Court to expunge Alavida’s registered trade-mark, on the basis of confusion. The Federal Court dismissed the application and subsequently the Federal Court of Appeal dismissed the appeal of the lower court decision.  Masterpiece Inc. further appealed to the Supreme Court.

Decision:
The appeal is allowed and Alavida’s registration should be expunged.

Reasons for Judgment of the Supreme Court:
Some use is enough

The trial judge found that the use by Masterpiece Inc. of ‘Masterpiece’ was not extensive during the relevant period 2001-2005, was rather “sporadic” and little of the evidence supported the use of ‘Masterpiece’ in respect of retirement residence services.  The trial judge did find that this sporadic use was “some use” but ultimately concluded that there was no likelihood of confusion. The Supreme Court found that “some use” was sufficient to make a finding of a likelihood of confusion.  In particular, the Supreme Court relied upon Masterpiece Inc.’s use of ‘Masterpiece the art of living’ despite the evidence of Alavida that the only possibly relevant documents filed in evidence by Masterpiece Inc. which illustrate the term ‘Masterpiece – the art of living’ were two brochures where ‘Masterpiece – the art of living’ was on the back page of the brochures and two articles in the Medicine Hat News from the summer of 2004.

The location where a mark is used is NOT relevant when considering the likelihood of confusion between a registered trade-mark and a prior unregistered one 

The Supreme Court confirmed that in assessing trade-mark infringement under s.19 or entitlement under s. 16 of the Trade-marks Act, the test for the likelihood of confusion is the same.  A hypothetical test is to be employed where the marks, if used in Canada, are to be assumed to be used in the same area. 

Look beyond actual use to the registration

The Supreme Court confirmed that in completing the confusion analysis it is improper to look only at actual use and not what is permitted by a trade-mark registration. 

The expense of goods and services do not displace the first impression test

The trial judge acknowledged in his reasons that in order to complete the confusion analysis, “one must consider the first impression in the mind of a casual consumer somewhat in a hurry who has an imperfect recollection of another trade-mark.” In his conclusion, the trial judge, when considering the cost of the service in issue, noted: “The nature of the business in which the marks in issue have been used suggests that consumers will be careful in choosing a provider. They are not likely to make choices based on first impression or be easily confused about the source.”

Under s.6(5) of the Trade-marks Act, the court is entitled to consider all the surrounding circumstances in determining a likelihood of confusion. It is possible to interpret the trial decision as contemplating that a hurried consumer, upon encountering an expensive ware or service, may deliberately remain undecided as to the source of that ware or service and investigate further.

The Supreme Court concluded otherwise.  It concluded that the trial judge changed the confusion test from one of first impression of a trade-mark to a test of consumers who will be unlikely to make choices based on first impression.  The hypothetical 'hurried consumer' of the first impression test remains alive and well as result of this decision, although the ‘hurried consumer’ is not a legislative construct.  Moreover, the Supreme Court rejected the possibility of a modified first impression test which could have otherwise excluded a ‘hurried consumer’ for an expensive service. 

It is this author’s opinion that s.6 requires that a likelihood of confusion for a trade-mark may only exist if there is use of a trade-mark. For a service, trade-mark use occurs if the trade-mark is used or displayed in the performance or advertising of available services.  However, for wares, the use of a trade-mark occurs at the time of the transfer of the property and as such, there is a conundrum.  The Supreme Court concluded "it is confusion when they encounter the trade-mark that is relevant." [emphasis added] If there is no transfer of property, and as such, no use of a trade-mark with respect to wares, can there be a finding of confusion under the Trade-marks Act, regardless of first impression?               

Expert evidence should only be permitted where testimony is likely to be outside the experience and knowledge of the judge

The Supreme Court reiterated the requirements to be met before expert evidence is accepted in a trial from R. v. Mohan, [1994] 2 S.C.R. 9.  The Supreme Court emphasized that no expert evidence should be permissible unless it is “likely to be outside the experience and knowledge of a judge.” The Supreme Court sent a clear message that surveys in trade-mark cases should be used sparingly and suggested in obiter that “[…] it would be salutary to have a case management judge assess the admissibility and usefulness of proposed expert and survey evidence at an early stage so as to avoid large expenditures of resources on evidence of little utility.”

For further information, please contact Scott Miller ( This e-mail address is being protected from spambots. You need JavaScript enabled to view it. or 613-567-0762).

Read the Decision and Reasons for Judgment here