LAwTJMES • MAv1,2017 PAGE 5 ------NEVVS------Does plain packaging legislation violate IP? BY DALE SMITH marks Act, if someone suspects "It certainly is a slippery that contraband is not an issue For Law Times that a trademark has not been slope, but this is really a health in Canada. If you don't believe used for three years, a Section 45 policy issue - should the gov the tobacco companies, ask the government bill intro notice could be drafted where ernment be entitled to restrict RCMP, the SQ or the OPP. Ask duced .in the Senate the registrar can request proof a substance that is known to be the Department of Homeland aims to enstlie that that the trademark has been dangerous?" says Lamie. Security in the U.S. They are on Atobacco and vaping used. "I think the government has the front line and contraband is products are restricted to plain If no proof is provided, the taken the position that it ought a problem." packaging as part of the ongo trademark can be struck from to be [taking]. The flip side is Gagnon also advised that ing battle to keep children and the register. that the tobacco companies will Canada would be better off youth from smoking. With While the bill includes lan say this is dearly a legal product. waiting for the conclusion of a more bills on the order paper guage that purports to protect It has trademark implications World Trade.Organization chal that would demand plain pack brand owners from losing trade and they're certainly serious lenge launched when Australia aging for things such as rec marks from non-use due to the from the tobacco companies' introduced its own plain pack reational marijuana and even extraordinary circumstances of point ofview ." aging laws. Senators were no~ certain kinds of junk food that the plain packaging legislation, Rowden adds that there are moved by Gagnon's arguments, would be attractive to children, Cynthia Rowden says there are many coun Rowden says its efficacy will many questions that remain be however. intellectual property lawyers are tries that have now introduced laws requir depend on how that language is cause much of the details will be "To date, there has been no concerned that these restrictions ing plain packaging. interpreted. handled by the government reg finding of a breach of intellec on brands and trademarks could "The longer the non-use, the ulation after the bill passes. tual property rights in any of have broader consequences. worked on submissions for the less likely it would be seen as ex- During committee testimo the other countries that have "This is part of a worldwide Trademark Legislation Com- traordinary," says Rowden, cit- ny, representatives of the tobac already implemented plain and phenomenon," says Cynthia mittee of the Canadian Bar As- ing issues such as the deprecia- co industry did raise the issue of standardized packaging," said Rowden, partner with intellec sociation in the past. tion ofgoodwill ifsomeone were their intellectual property rights. independent Senator Chantal tual property law firm Bereskin She says IP organizations are to try to infringe on the trade "These measures violate our Petitderc, the bill's sponsor, in & Parr LLP in Toronto. concerned that consumers will mark on a completely different trademark rights," said Eric an emailed reply to Law Times. "There are many countries have issues identifying brands of product, such as aT-shirt. Gagnon, director of govern "In [the] United Kingdom, that have now introduced leg a quality that they have come to "I don't know whether this ment and regulatory affairs for the tobacco industry unsuc islation requiring plain packag know and expect. could be considered to be aban- Imperial Tobacco Canada. cessfully challenged the Stan ing, and in some of those coun "From a consumer perspec- donment if you can no longer "As a business involved in the dardised Packaging of Tobacco tries, for example, Australia, tive, they lose the ability to easily use a mark because of statutory sale of a legal product, we have Products Regulations 2015, there have been complaints to distinguish between the goods restrictions," says Rowden. the fundamental right to use our which was upheld by the United the World Trade Organization thattheywantandthegoodsthat Lomic says companies "may trademarks." Kingdom's High Court of Jus that the limitations are a restric they don't want," says Rowden. be able to keep the trademark on Gagnon stated that one ofthe tice on May 19, 2016 and the tion on trade that is contrary to "The other issue that has a the register. reasons that companies invest in decision of the High Court of international treaties that Cana big potential impact on con- "The loss may be the com- their packaging is to ensure that Justice was subsequently upheld da has also signed." sumers is counterfeiting, and mon law rights that only flow their products and trademarks by the United Kingdom's Court Rowden says lawyers must be that is an issue that has been from the actual use of the trade- are difficult to copy, and he reit of Appeal on Nov. 30, 26l6. aware of the potential legislation identified by the tobacco indus- mark," he says. "That will be a erated that contraband products Petitclerc says "several coun because the idea of plain pack try as a problem. challenge." are a major problem in their in tries have implemented plain aging is a unique concept that "If you permit packages to Common law rights include dustry. and standardized packaging." affects specific products. be sold that are extremely plain, use of branding that develops a "If you remove that trade "There have been also no She also says it's a fundamen then you increase the ease ~utation even if the branding mark, we're saying that illegal findings, to date, that plain and tal change in the rights ofbrand which both counterfeits can be is not registered with the gov traffickers will take over this standardized packaging infring owners and anyone who advises imported and exported and the ernment, which can be difficult market," said Gagnon. es on any international trade them in terms of packaging, la ability of everybody along the to prove if challenged. "I know some people will say agreement," she says. LT belling or advertising issues, and chain, from the customs officials lawyers should be well aware of to the wholesalers to the retail these restrictions if and when ers to the consumers, to eas they come into effect. ily distinguish between what is Bill S-5, An Act to amend counterfeit and what is not," says the Tobacco Act and the Non Rowden. smokers' Health Act, has just "That brings with it potential completed study at the Sen health and safety issues along ate's Social Affairs, Science and with the ability to control a Technology committee, and it criminal activity." is due to be reported back with The counterfeiting issue amendments to the chamber on would also be a concern with May 2. None of those amend plain packaging around food ments deals with the plain pack and beverages that Greene aging aspects of the bill, which Raine's bill would also mandate. proposes to give government the Rowden says that, from the PROCRAM OUTLINE regulatory authority to restrict trademark owner's perspective, IN AUGUST COMPANY: THE LONG AND WINDING ROAD: what can appear on packaging. there is also the potential for the Advancing Women's Leadership Developing a Career Toolkit If passed, the bill will go to loss of a tremendous amount of on the Bench the House of Commons. investment in branding, some SHOULD I STAY OR SHOULD I GO?: Two other bills currently on of which has resulted in certain TALES FROM THE FRONT: How In-House Counsel Are Zigzagging the Order Paper also have plain trademarks becoming iconic, Lessons on How to Lead To the Top packaging provisions - both along with protecting and en Bill C-45, which is the govern forcing the rights. Some of that LESSONS LEARNED FROM A SEAT AT THE TABLE: ment's bill to set up the legal enforcement has meant litiga OTHER INDUSTRIES: Defining Strategic Leadership for ized framework for recreational tion going as far as the Federal Ten Innovative and Effective Ways to Women on Boards marijuana, as well as Bill S-228, Court of Appeal. Attract, Advance & Retain Women a Senate public bill introduced "Use is the foundation of by Senator Nancy Greene Raine trademark law in Canada and, CONTACT US generally, clients should use the that would prohibit food and Call: Toll free 1-877-298-5868 or (416) 609-5868 I Fax: (416) 609-5841 I Web: www.lexpert.ca beverage advertising directed at trademark as registered and Email: For questions please contact [email protected], children. register the trademark as used," for registration inquiries, please contact [email protected] Rowden is a member of com says Paul Lamie of intellectual mittees that have drafted com and social media law firm Lamie SAVE THE DATE: Zenith Awards Gala ments on behalf ofthe Canadian Law in Toronto. June 22, 20171 Arcadian Court
~ - Intellectual Property Institute, "The extent that the legisla the International Trademark tion precludes use of the trade the answer company Association with respect to to mark puts those trademarks at THOMSON REUTERS" bacco and the children's adver risk." 'EXPERTProfessional Development tising draft bill. Rowden has also According to the Trade-
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