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The challenge of trademark law in Canada’s federal and bijural system
“The challenge of trademark law in Canada’s federal and bijural system”, in Ysolde Gendreau, ed., An Emerging Intellectual Property Paradigm: Perspectives from Canada, Queen Mary Studies in Intellectual Property Law, Cheltenham, UK: Edward Elgar, 2008, 3-21
Canada’s constitution divides jurisdiction over the full range of legislative subject matter between federal and provincial governments. While intellectual property subjects have typically fallen within federal jurisdiction, some aspects of intellectual property protection are provincial in nature. This is particularly the case in the area of trademarks. Further, Canada is a mixed jurisdiction. While the three territories and nine of the ten provinces draw on the common law legal tradition, Quebec’s private law is drawn from the French civil law tradition. This federal and bijural nature of Canada’s legal system presents some challenges for trademark law. The challenges cut across a variety of lines. This book chapter explores the issues which arise from the tension between the federal and provincial levels of government and between the co-existing common and civil law traditions. Primary focus is given to the issue of the division of powers. The tension between jurisdiction over registered and unregistered marks is explored. Issues such as the constitutionality of various provisions of the Trade-marks Act, and the Trade-marks Act itself are considered, as well as the interrelationship between provincial legislation governing business names and registered trademarks. The paper also explores the harmonization of principles of “passing off” in the private law of both Quebec and the common law provinces.
in Refereed Book Chapters
Tags: IP
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The Doctrine of Functionality in Trade-mark Law Post-Kirkbi
“The Doctrine of Functionality in Trade-mark Law Post-Kirkbi”, (2007) 21 I.P.J. 87-115.
The doctrine of functionality has long served to prevent the creation of trade-mark monopolies over the functional features of wares. In Kirkbi AG v. Ritvik Holdings Inc., the Supreme Court of Canada emphasized the policy basis for the doctrine which it described as “a logical principle of trade-marks law”. In this article, the author examines the Kirkbi decision and identifies a number of issues which remain unresolved by the Court’s reasons. These include the reconciliation of approaches to functionality in earlier court decisions, the role of prior patents, the scope of the doctrine of functionality, issues of utility and ornamentation, and the subject matter to which the doctrine applies.
in Refereed Articles
Tags: IP
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Book Review: Stanley A. Cohen, Privacy, Crime and Terror: Legal Rights and Security in a Time of Peril
Book Review: Stanley A. Cohen, Privacy, Crime and Terror: Legal Rights and Security in a Time of Peril (Markham: LexisNexis Butterworths, 2005) 584 pp. (2007) 6 C.J.L.T 67-71. PDF Available here
in Book Reviews
Tags: IP
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Using Copyright Law to Prevent Parallel Importation: A Comment on Kraft Canada, Inc. v. Euro Excellence, Inc.
“Using Copyright Law to Prevent Parallel Importation: A Comment on Kraft Canada, Inc. v. Euro Excellence, Inc.”, (2007) 85 Canadian Bar Review 409-432
In Kraft Canada, Inc. v. Euro Excellence, Inc., the Federal Court of Appeal ruled that the secondary infringement provisions of the Copyright Act could be used to prevent the parallel importation into Canada of chocolate bars, due to copyrights in the trade-mark logos on the product labels. The effect of this decision, currently on appeal to the Supreme Court of Canada, is to give trade-mark holders a tool to prevent parallel importation in contexts where trade-mark law has generally been ineffective. While the use of copyright law to achieve a result in these circumstances is problematic, the author argues that the solution lies in legislative amendment rather than in creative interpretations of the Copyright Act.
in Refereed Articles
Tags: IP
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Table Scraps or a Full Course Meal? The Public Domain in Canadian Copyright Law
“Table Scraps or a Full Course Meal? The Public Domain in Canadian Copyright Law”, in Intellectual Property at the Edge: New Approaches to IP in a Transsystemic World, Proceedings of the Meredith Lectures, Editions Yvon Blais, 2007, pp. 347-376.
While the concept of the public domain has long been an important part of U.S. copyright case law and commentary, its role has been relatively minor in Canada. References to the public domain in Canadian cases have, until very recently, been rare, made largely in passing, and have done little to define or explore the concept. The Canadian public domain is, in some significant respects, much smaller than that in the United States, and Canadian copyright legislation and case law has not traditionally favoured a robust public domain engineered through deliberate policy choices. Rather, the public domain has been constituted by leftovers: things that cannot be monopolized by virtue of fundamental axioms of copyright law, works in which copyrights have expired, and things that do not fit within the definitions of works. The public domain as it is currently constituted is also a fragile thing: vigilance is required in interpretations of key copyright concepts so as not to further shrink its scope. The historical role of the public domain stands in interesting contrast to its sudden assumed importance in recent Supreme Court of Canada decisions.
In this paper, I explore the scope of the public domain in Canada using illustrations drawn from “real life”. The illustrations chosen, which relate to Crown copyright and to the reproduction of works in which copyright has expired, offer insights into the scope and fragility of the public domain in Canada. Crown copyright is an example of the narrow horizons of the Canadian public domain as set out in the legislation. The issue of the reproduction of works in which copyright has expired allows for an exploration of the scope of the public domain as a matter of statutory interpretation – more specifically, the interpretation of the threshold standard of originality. This is an area of enormous significance as it is through interpretation that courts wield enormous power in constituting the public domain.
in Non-refereed Book Chapters/Articles
Tags: IP