Canadian Lawyer

40 F E B R U A R Y 2 0 1 7 w w w . C A N A D I A N L a w y e r m a g . c o m they previously existed" and allows strong protections for some geographic indica- tions but exceptions for five or 10 years for others "for reasons that are not totally apparent." "They've come up with a different confusion analysis and I presume that's because in trademark practice when we evaluate confusion we consider things such as how inherently distinctive a mark is; how good it is. But that doesn't really work for things like geographical indica- tions for where things come from. But it's necessitated a change to things like the confusion analysis and it's thrown out to private litigants to discover what that will entail and perhaps work that out later," says Bowden. "For IP practitioners looking at this deal, we're having part of our system Europeanized as part of some sort of tit for tat they did," he said. As Bowden wrote in a brief, Canada's Trademarks Act provides for the protec- tions of geographic indications covering wine and spirits. The amendments expand the protection to "agricultural products" and "food" including cheese, sausages and olives. The amendments also create a separate approach for assessing confusion between a trademark and a GI. The day after CETA was signed, Bill C-30, an Act to implement the Com- prehensive Economic and Trade Agree- ment between Canada and the European Union and its Member States, was tabled in Parliament. Its goal is to implement portions of CETA and provide authority to replace the current summary Notice of Compliance proceedings with full patent infringement and validity actions. For trademark law, the legislation expands protections for geographical indications. It will also provide for a two-year drug patent term extension and drug litiga- tion proceedings will be turned into full actions. Junyi Chen, an associate also at Deeth Williams Wall, says those add up to a "very big deal" in Canada. Right now, she says, Bill C-30 doesn't have much detail in it around those issues and she hopes more information comes when the regulations are issued. "I think the meat will be in the regula- tions. Especially now under the current regulation, the generic company knows it has two years to get to certainty of one kind or another. It's not clear to me if it's possible to have a full action in two years," she says. It will hopefully mean final determina- tions on patent infringement and validity issues, which Noel Courage, partner at Bereskin & Parr LLP in Toronto, says will reduce the multiplicity of litigation and improving brand-name companies' rights to appeal trial decisions. "They are turning the NOC proceed- ings from an application into actions, saying instead of being an application procedure or a prohibition order, we're just going to turn it into a patent infringe- ment action and it will be decided with finality," Courage says. "We don't know what that system is going to look like, but they've empowered the government to pass regulations to overhaul the NOC proceedings." There are two reasons for this move: to reduce multiplicity of litigation and to L E G A L R E P O RT \ I N T E L L E C T U A L P R O P E RT Y Innovative businesses choose Smart & Biggar — the recognized leader in intellectual property O t t a w a / T o r o n t o / M o n t r e a l / V a n c o u v e r / C a l g a r y s m a r t - b i g g a r . c a U N P A R A L L E L E D I P • Canadian Trademark Contentious Firm of the Year (Managing Intellectual Property's 2016 North America Awards) Highest ranking (Band 1) in Canadian intellectual property law (Chambers Global – The World's Leading Lawyers for Business, 2016 Edition) Canadian Specialty IP Firm of the Year Award (Managing Intellectual Property's 2016 North America Awards) Canada's Intellectual Property Litigation Firm of the Year for two consecutive years (Benchmark Canada 2016 Awards) • • • Untitled-8 1 2017-01-11 12:37 PM

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