As a lawyer, I perceived overlapping legal rights to be a reasonable attempt of the legislators to cover the numerous nuances of the empirical reality. However, prior to my attendance at IP Osgoode's symposium entitled, ‘Intellectual Property: Fuel for the Fire of Genius or Shelf Life of a Banana?’, which honoured Prof. David Vaver's Order of Canada appointment, I had never considered ‘redundancy’ in this aspect. The first panel of the symposium examined overlap and redundancy in the intellectual property (IP) law system, which is one of Prof. Vaver’s key research contributions in the field of IP law. The panel featured the Honourable Roger T. Hughes, QC, Prof. Graeme Dinwoodie, and Prof. Jeremy de Beer, and in an attempt to answer the question of whether IP rights was ‘too much of the same’, the panelists offered their perspectives on some of the different aspects of overlapping IP rights under patent law, the Plant Breeders’ Rights Act [1], trademarks law, and unfair competition.
Patents and Plant Breeders’ Rights
Focusing on the overlap between patents and the plant breeders’ rights (PBR), Prof. de Beer, quoted Justice Arbour’s dissenting opinion in Monsanto Canada Inc. v. Schmeiser, which adopted Prof. Vaver’s view that “patents should not necessarily be available when other, more tailored intellectual property protection exists”. The same idea is traced back in the dissent of the United States (US) Supreme Court’s 5-4 decision of Diamond v. Chakrabarty, which influenced the position of the Canadian Federal Court of Appeal in Pioneer Hi-Bred Ltd. v. Canada (Commissioner of Patents) regarding the patentability of higher life forms. A decade later, when the Supreme Court of Canada was faced with the same issue in Harvard College v. Canada (Commissioner of Patents), Justice Bastarache suggested that PBR would not be available if patent rights were meant to apply and that plant breeders’ protection was better tailored for this purpose.
Prof. De Beer shed further light on the current development of PBR legislation and the business model built around the rights it introduces. In particular, influenced by a shift in Australian agricultural policy, Canada introduced the Agricultural Growth Act in 2015 to amend PBR legislation by establishing broader, longer, and stronger rights for plant varieties in Canada. Moreover, while revenues are generated on the recurring sale of inputs, namely seeds, under the patent regime, the revenue system stemming from the Plant Breeders’ Rights Act provides that royalties are collected on harvested materials. These end-point royalties serve as a risk sharing mechanism for farmers and are considered more favourable to farmers then the revenue system under the patent regime.
According to Prof. de Beer we can expect to see multiple IP rights in the lucrative industry of recreational cannabis. Deciding which IP rights will apply in that context depends on scientific, economic, and business factors. However, he noted that it is scientifically questionable whether cannabis is stable enough to breed in a way that would meet the requirements for plant breeder rights, and there are also questions as to what a variety or strain is in the medical context.
The Relationship between Trademark Rights and Unfair Competition Law
Prof. Dinwoodie commenced his presentation by questioning whether the overlap in IP is ‘too much of the same’. While noting that there is no single general way to address the overlap of different IP rights, he suggested that a number of principles or other estoppel-like arguments could be used to circumscribe this outcome, for example the election doctrine as cited by the US Supreme Court decision in Traffix.
He also noted that legitimate social policy has been recognized by legislatures and courts as a competing force to accord constrained IP protection. For instance, to avoid the application of cumulative IP rights, the European Union and the United Kingdom use a hierarchical approach which can be cheekily summarized as “when two IP regimes come into conflict, trademark loses”. Citing Hauck GmbH & Co KG v Stokke A/S Prof. Dinwoodie suggested that due to the functionality doctrine of trademark law, producers often opt for patent, copyright or design law protection over trademark protection.
Invoking the decision of the US Second Circuit Court of Appeals in Louboutin S.A. v. Yves Saint Laurent America Holding, Prof. Dinwoodie proposed applying a normative approach to the scope of trademark protection. For example, treating shape marks as “thin” trademarks could help achieve a better balance between the industrial policy and consumer protection objectives of trademarks and unfair competition. Besides, the complementary role of unfair competition law [2], recognized in Lego, could be further untangled, for instance by offering weaker remedies to empirically-grounded unregistered claims, while also requiring proof of real social harm.
Finally, Article 10bis of the Paris Convention could be employed to balance IP over-protection with users’ rights. As Prof. Dinwoodie suggested, since trademark defences in the EU inquire of honest practices in industrial and commercial matters, the existence of a right to engage in a particular conduct under another IP regime with equal claim to regulate may offer a way of reconciling the competing claims of trademark and other IP regimes.
The Hon. Roger T. Hughes rounded off the discussion by explaining why redundancy and overlap are desirable and necessary. Drawing examples from his engineering training and legal practice, he craftily illustrated that redundancy and overlap can lead to the evolution of IP law.
There was consensus among the panelists that there would be less redundancy if the lines of the overlapping applicable IP legislation are more clearly drawn as the law evolves to respond to emerging issues. Besides, as Justice Robin Jacob observed, "The big question for David is and always has been, where is the rational, the sensible, place to draw the line between too much and too little" [3].
Yonida Koukio is an IPilogue Editor and a LL.M. Candidate at Osgoode Hall Law School. She holds LL.B. and LL.M. degrees from Democritus University of Thrace, Greece, and is a member of the Athens Bar Association since 2014. As a lawyer, Yonida practiced in the areas of health law and civil litigation. Currently, Yonida’s further interests extend to privacy and technological innovation. She is also the co-founder of LAWCALS, the first L2L platform in Greece, which connects lawyers and simplifies the delegation of legal tasks among them.
[1] See also Mark D. Janis, “Interfaces in Plant Intellectual Property”, at Neil Wilkof & Shamnad Basheer (eds), Overlapping Intellectual Property Rights (Oxford: Oxford University Press, 2012), at 83.
[2] See also Axel Nordemann & Tara Mooney Aaron, “The Relationship between Trademark Rights and Unfair Competition Law”, at Neil Wilkof & Shamnad Basheer (eds), Overlapping Intellectual Property Rights (Oxford: Oxford University Press, 2012), at 341.
[3] Catherine Ng, Lionel Bently & Giuseppina D'Agostino, eds., The Common Law of Intellectual Property: Essays in Honour of David Vaver (Hart Publishing Oxford 2010) at vi.