USMCA negotiations completed late last year with the parties signing it at the end of November. With it, the complete text of the agreement was released to the public for their reading pleasure. Clocking in at close to two thousand pages, most will see the text as a great substitute for Nyquil.
Of course, despite the narcoleptic power of the agreement, for some, it will be in their best interests to give it a look over. For instance, Chapter 3 deals with “Agriculture” and is probably something farmers should read. Chapter 6 is all about “Textiles and Apparel” and may be something aspiring fashion designers should be aware of. Then, there is Chapter 20, “Intellectual Property” which means anyone practicing in the field of patents, copyright, trade-marks or industrial designs, like me, should probably take a look at it to see what’s going on.
Fortunately for me, section C, which deals with Trademarks, is only four pages long. On reading, it largely does not actually say anything fundamentally new or different than what Canada has agreed to in previous agreements or, at the very least, been advised to implement. However, there was one section in particular that caught my eye.
The agreement acknowledges that Well-Known (Famous) Trade-marks should be provided with an array of special rights and provisions beyond those of normal trade-marks, including, a wider ambit of protection and the ability to enforce rights in Well-Known Trade-marks that may have only been used outside of Canada. However, most of these provisions read almost verbatim to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which Canada ratified in 1995. And, on a plain reading of the Trade-marks Act, those provisions do not appear to have been implemented in any significant manner.
Specifically, Section 5 of the Trade-marks Act offers a very narrow and outdated path to a trade-mark being considered well known in Canada and requires spillover advertising in the form of printed publications or radio broadcasts only. This may have been sufficient when these forms of media were all the rage in the 1940s, but in 2019, it would be antiquated to call these provisions antiquated.
The Trade-marks Act also does not offer any particular rights or remedies to well-known trade-marks outside those typically available to normal trade-marks.
This is particularly relevant as the parties explicitly agree in the text of USMCA to “recognize the importance” of the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks as adopted by WIPO in September of 1999, which articulates, among many other things, a broad list of criteria for establishing well known trade-marks and the remedies which should be available to them.
But Canada has already agreed to the substantive elements of these provisions in other agreements over two decades ago and have only paid them lip service. Does this mean changes to the laws with respect to Well-Known Trade-marks are coming? Does the recognition of the “importance” of the Joint Recommendations provide any obligation to actually implement them? Or is it like healthy eating and exercise? Most recognize its importance, but few actually do it.