Canadian Lawyer InHouse

25 CANADIANLAWYERMAG.COM/INHOUSE MAY 2015 But not all the changes to Canada's in- tellectual property laws are worrisome, and lawyers mostly welcome new regula- tions that will make it easy to co-opt trade authorities in a crackdown on counterfeit goods. The new rules, which took effect on Jan. 1, 2015, allow trademark holders to register their marks with the Canada Border Services Agency and fi le a request for as- sistance asking the border offi cials to seize potentially counterfeit goods. Trademark holders will then have 10 days to decide whether to fi le a lawsuit to halt the import and have the goods seized and destroyed. "For the fi rst time in Canada, customs will seize infringing items at the border and hold them, as opposed to letting them come into the country and let the trademark owner deal with them later," says Matthew Marquardt, a partner and IP lawyer with Dickinson Wright LLP in Toronto. "If pirates are trying to rip off your mark you can not only stop the goods, but perhaps even proceed against them criminally for trademark infringement. It opens up a much larger pool of goods that can be controlled at the border." Marquardt notes the courts have yet to rule on the new rules, making it all the more important for trademark holders to be sure that they have a strong case, perhaps working together or with industry groups or associations, before they fi le suit. "I would advise them to be proactive about bringing some of these actions under favourable circumstances so they can get these defi nitions and interpretations set the way they want to," he says. There are concerns here about the cost as well, and Robbins, from Bereskin & Parr, notes that a trademark holder might have to foot a hefty bill while court proceedings roll. "The provisions have been drafted in order to make sure that the trademark owner quickly bears the cost of the detention, so there's a lot of apprehension about jumping in right now, because you could be jumping in by fi ling a request for assistance and putting yourself, as trademark owner, on the hook for the cost of detaining and potentially destroying the goods," he says. Another set of changes will simplify rules for patents and industrial design, making it harder, and probably costlier, to abandon a patent application and then reinstate it. "Canada was perhaps the most fl exible country, and abandonment didn't really mean anything," says Bhupinder Randhawa, a partner and patent expert at Bereskin & Parr. Canadian fees to reinstate a patent application used to be nominal, he says, in stark contrast to the situation in Europe, where deadlines are far shorter and fees can run to "many thousands of euros." But that is likely to change. "Patents are tough things to deal with for in-house counsel," he adds. "I think it's im- portant for in-house counsel to pay attention to the deadlines, more so than they do some- times, and to make sure they are not relying on the fl exibility of the patent system, which is going away. . . . Playing any kind of games with abandonment and reinstatement could give your competitors rights and access to your technology and is going to be obviously quite risky." IH INHOUSE For more information contact InHouse editor Jennifer Brown at jen.brown@thomsonreuters.com 10 th Annual General Counsel Roundtable This year we are taking our annual roundtable on the road to Montreal to speak with five general counsel who represent a range of industry sectors. They share insights into managing the demands of the in-house role. Fred Headon, Assistant General Counsel, Labour & Employment, Air Canada Nadia Petrolito, General Counsel, Chief Communications Officer, L'Oréal Canada Inc. Deborah Greenberg, VP & General Counsel, Aimia Canada Mark Girgis, VP General Counsel & Corporate Secretary, MEGA Brands Inc. Daniel Desjardins, SVP, General Counsel & Corporate Secretary, Bombardier Read it and watch video coverage online June 29 th at www.canadianlawyermag.com/inhouse COMING IN July 2015 Sponsored by Untitled-1 1 2015-04-09 11:17 AM

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