What is the impact of the USMCA on IP in Canada?

The US-Mexico-Canada Agreement (USMCA), which is set to replace NAFTA, concluded on September 30, 2018. Chapter 20 of this trilateral trade deal contains a number of provisions that relate to intellectual property.

Here is a high-level summary of this chapter.

Patents 

Canada shall permit for patent term adjustments for unreasonable delays by the Patent Office if the patent issues more than five years from the date the application is filed, or three years after examination is requested. This change must be implemented within four-and-a-half years of the USMCA coming into force. There are also specific extension provisions for pharmaceuticals that are likely satisfied by the introduction of Certificates of Supplementary Protection in 2017.

Data Protection for Biologics

A period of data protection (market exclusivity) of at least 10 years from the date of first marketing approval is required for biologics. This extends the current data protection term by two years.  Canada has five years from the coming into force of the USMCA to implement this change. 

Copyright and Related Rights  

The term of copyright protection will be increased by 20 years, as the current term in Canada is the life of the author(s) plus 50 years.  The USMCA requires the term be no less than the life of the author(s) plus 70 years. The USMCA also contemplates “safe harbors” for internet service providers from liability for copyright infringement that they do not initiate, direct or control and that takes place through their networks. Certain eligibility requirements are provided.

Trademarks 

Requirements that Canada not deny registration to scent marks, and to further ratify or accede to the Madrid Protocol and adopt a trademark classification system consistent with the Nice Classification system are already in the works through legislative amendments expected to come into force in 2019.  Other provisions relate to “collective marks,” “country names” and “well-known marks.”  The protection of geographical indications is covered in a number of USMCA provisions that relate to administrative procedures, grounds of opposition, denial and cancellation and guidelines as to whether a term is generic.

Trademark Counterfeiting

The USMCA provides for statutory damages, called “pre-established damages.” The provisions provide for one or moreof the following: (a) pre-established damages, which shall be available on the election of the right holder; or (b) additional damages. Additional damages “may include exemplary or punitive damages.” As the Canadian civil legal system already allows for “additional damages” in the nature of exemplary and punitive damages (albeit in an entirely discretionary fashion), Canada is likely already in compliance with USMCA provisions. 

• Border Measures for Pirated/Counterfeit Goods: The USMCA requires that CBSA officials have the right to initiate border measures against counterfeit or pirated goods that are “in transit,” i.e. coming from outside Canada, with a final destination other than Canada but which pass through Canada within CBSA control. Goods “in transit” are currently off-limits. Customs officials may inspect, detain and destroy suspected counterfeit trademark goods or pirated copyright goods pursuant to a determination of infringement by competent authorities.

   

• Domain Names: Canada is required to have a domain name dispute mechanism modelled on the Uniform Domain-Name Dispute Resolution Policy for its .ca domain registry, with adequate remedies as well as online public access to a database of contact information for domain name registrants, subject to privacy and personal data restrictions.

   

• Industrial Designs:Amendments to Canada’s Industrial Design Act and Regulations that came into force on November 5, 2018, reflect USMCA requirements, including ratification of the Hague Agreement.