Order Fixing the Day after the Day on which this Order is made as the Day on which Certain Provisions of the two Acts Come into Force: SI/2018-94

Canada Gazette, Part II, Volume 152, Number 22

Registration

October 31, 2018

ECONOMIC ACTION PLAN 2014 ACT, NO. 1
COMBATING COUNTERFEIT PRODUCTS ACT

Order Fixing the Day after the Day on which this Order is made as the Day on which Certain Provisions of the two Acts Come into Force

P.C. 2018-1252 October 4, 2018

Her Excellency the Governor General in Council, on the recommendation of the Minister of Industry,

EXPLANATORY NOTE

(This note is not part of the Order.)

Proposal

Pursuant to subsection 368(2) of the Economic Action Plan 2014 Act, No. 1, this Order fixes the day after the day on which this Order is made as the day on which section 358.1 of that Act comes into force. Further, pursuant to subsection 63(1) of the Combating Counterfeit Products Act, this Order fixes the day after the day on which this Order is made as the day on which sections 27 and 28 of that Act come into force.

Objective

The objective of the Order is to establish the coming into force of the provisions in sections 27 and 28 of the Combating Counterfeit Products Act and section 358.1 of the Economic Action Plan 2014 Act, No. 1, which amends the Trade-marks Act in order to prescribe how information is to be managed by the Registrar of Trademarks. This amendment will provide the Trademarks Office with clear authority to dispose of trademark files six years after the file is no longer active (for example six years after the trademark has been refused, abandoned or expunged).

Background

The Trademarks Office keeps all paper records in perpetuity, including inactive files (i.e. trademark applications that have been refused or abandoned, and trademark registrations that have been expunged from the Register).

The amendments to the Trade-marks Act will allow the Canadian Intellectual Property Office (CIPO) to preserve relevant and pertinent records during their useful life cycle, and to make them available to the public on request. However, once these documents are assessed to hold no further value (defined in the amendment as six years after the file has become inactive), they can be physically destroyed. The retention period of six years was set in order to accommodate requirements under the Privacy Act (which requires that personal information held and used by a government institution for an administrative purpose must be retained for at least two years). It also ensures any Federal Court proceedings have had ample time to run their course. Finally, this compares favourably against the practices of other intellectual property offices, specifically the United States (files are destroyed after two years of inactivity), the European Union (five years), and the United Kingdom (most files are retained for seven years).

Implications

The major implication of bringing into force these sections of the Combating Counterfeit Products Act and the Economic Action Plan 2014 Act, No. 1 will be cost savings for the government, as there will be clear authority to dispose of trademark files six years after the file is no longer active. Currently, keeping all related documents is both costly and inefficient. For example, it is estimated that warehousing costs for refused, abandoned and expunged records are over $200,000 annually.

Trademark rights holders, as well as their representatives, are not expected to be impacted by this change. In cases where physical evidence of a record is required, for example a Federal Court case involving the validity of a trademark, the six-year grace period once the file becomes inactive will provide ample time for proceedings to be completed.

Consultation

As part of CIPO’s commitment to modernize and streamline the administration of the intellectual property framework, the Office reviewed its practice for storing paper files relating to inactive trademark applications and registrations. To that end, CIPO hosted a 30-day public comment period on its website between October 8, 2010, and November 8, 2010, to seek feedback on a proposed practice notice regarding the disposition of files six years following the date they go inactive. CIPO received five submissions from trademark agents, groups representing agents (the Canadian Bar Association and the Intellectual Property Institute of Canada) and one business that reviews trademark documentation. The comments received were sympathetic to the problems arising from physically storing the files, but expressed a desire to keep files stored in perpetuity in case they are required as evidence in the future. CIPO believes that a six-year retention period after the file has gone inactive will balance these concerns with those of the Office’s efficiency, and is also exploring the possibility of a pilot project to digitize records in order to allay these concerns.

All of the submissions further indicated that a change to the Trade-marks Act would first be required. The above mentioned Order in Council seeks to institute this legislative change.

Contact

Mesmin Pierre
Director General
Trademarks Branch
Canadian Intellectual Property Office
50 Victoria Street, Room C236-10
Gatineau, Quebec
K1A 0C9
Email: ic.cipo-consultations-opic.ic@canada.ca