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LEGAL REPORT: INTELLECTUAL PROPERTY "They're basically saying we need a better IP strategy and they're committed to looking at it. " — MICHAEL MANSON, SMART & BIGGAR/FETHERSTONHAUGH more progressive — if not more aggressive — in their approach to intellectual property matters. The Supreme Court of Canada's July 2007 decision in Eu- ro-Excellence Inc. v. Kraft Canada Inc., while not upholding the lower court's ruling to enforce copyright against a grey marketer importing goods into Canada, leaves room for a copyright argument, says Manson. In that case, Kraft Can- ada Inc. had sought to protect its licence to market Toble- rone chocolate bars against Euro-Excellence Inc., which had begun exporting the treats to Canada for retail at a lower cost. Kraft took the position that Euro-Excellence violated its copyright rather than trademark licensing. While the SCC's majority opinion rejected Kraft's argu- ment, "what they left the door open for, which we as prac- titioners think will prevail, is if you had an assignment of copyright in Canada, we could prevent goods coming into Canada that would infringe our copyright even if we couldn't have stopped it on the Trademark Act. But you'd have to have an assignment of copyright, in writing," says Manson. "So that's huge. We believe the likelihood is if it went back up to the Supreme Court and you were the owner of copyright, you could stop grey market goods. Based on this case, the only way you're going to stop grey marketing or parallel imports in Canada would be to have independent copyright owner- ship of indicia that can be protected on those products." Manson, a champion for tougher intellectual property laws and means of enforcement in Canada, says he's also encour- aged by a paper released by the government's standing com- mittee on industry science and technology, entitled "Coun- terfeiting and Piracy are Theft," which was authored by four members of cabinet last year. It essentially calls for a "robust framework for intellectual property rights, not only to address the risks posed by counterfeit goods to consumer health and KAPPEL LUDLOW www.kappelludlow.com Barristers & Solicitors Patent & Trademark Agents Patents, Trademarks, Copyright & Related Litigation Gregory C. Ludlow BA. LL.B. Certified Specialist (Intellectual Property Law: Trade-Mark & Copyright) Peter F. Kappel BASc, P. Eng., LL.B. Certified Specialist (Intellectual Property Law: Patent, Trade-Mark & Copyright) Suite 1400 - 439 University Ave., Toronto, Ontario M5G 1Y8 Tel: (416) 408-4565 Fax: (416) 408-4569 �� Queen Street West, Suite ����, Toronto, Ontario ��� ��� Tel: ���.���.�������.���.���� www. C ANADIAN Law ye rmag.com JANU AR Y 2008 51 safety but to foster an environment conducive to innovation, in an effort to further attract investment and high-paying jobs to this country's growing knowledge-based economy." "They're basically saying we need a better IP strategy and they're committed to looking at it," says Manson, welcoming the premise. Still, he says, lawmakers need to act more and talk less to render Canada's intellectual property laws more practical to enforce. "It's the legislation and government," he says. "They're singing the right notes right now but there's been no action." Other lawyers are entering the New Year hopeful that the United States Patent and Trademark Office (USPTO) will re- solve a legal dispute over rule changes it attempted to intro- duce last fall. Almost all Canadians with significant patents to register vie to do so in the U.S. first, says Fraser Rowand of Ridout & Maybee LLP. Mere hours before new rules were introduced by the USPTO, it was hit with an injunction stemming from two lawsuits challenging the changes. The Most of our successes come in court, but getting them on the world stage is nice too. ��� Top Canadian Trade-mark and Copyright Firm 2007 by Managing Intellectual Property.