What USMCA Ratification Means for IP in Canada

On March 13, 2020, Canada’s House of Commons and Senate both passed Bill C-4, the Canada-United States-Mexico Agreement Implementation Act (the “Act”), which received royal assent the same day. This makes Canada the third and final country to ratify the USMCA (officially known as CUSMA in Canada), although the agreement does not come into force domestically until ordered so by the Governor in Council. This will likely happen following a three-month period during which the member nations must agree on implementation regulations (e.g. naming each country’s representatives for the conflict resolution mechanism), a period which may well be prolonged due to the global COVID-19 crisis.

The Act consists of three parts: the implementation of the agreement itself, including key provisions such as a prohibition on private proceedings for agreement violations without the Attorney General’s consent; a series of amendments to existing statutes; and the coming into force provisions. The Act amends 24 existing statutes in total, including the Copyright Act, Trademarks Act, and other laws relating to intellectual property. IP owners and businesses should familiarize themselves with changes relevant to their rights and operations within the upcoming months.

Patents:

The Act’s requirement to ratify the Patent Law Treaty or adopt similar procedural standards is moot since Canada did so last year. However, Canada will now have to adjust patent terms to compensate for unreasonable patent office delays in patent issuance, including delays of more than five years from the filing date or three years from a request for examination, whichever is later.

Copyright:

One of the Act’s most significant changes in relation to IP is the requirement that Canada extend its basic term of copyright protection from the life of the author plus 50 years to the life of the author plus 70 years. This harmonizes Canadian copyright legislation with that of its American and European counterparts.

Trademarks:

Many of the Act’s trademark provisions have little impact on Canada since its accession to the Madrid Protocol, Singapore Treaty, and Nice Agreement last year. However, Canada will need to allow for registration of collective marks going forward (i.e. marks of an association or collective group).

Enforcement:

Customs officials will now be permitted to inspect, detain, and destroy suspected counterfeit trademark goods or pirated copyright goods if they are infringing. The fact that these provisions do not necessarily require a court to make a finding of infringement expedites trademark and copyright enforcement in favor of IP owners but may defer too much authority to law enforcement officials.

The Act also has various implications for automobile exports, agricultural markets, digital trade, and many other industries. A topic of further interest is the Act’s limitation on government restrictions of cross-border data transfers, which has quite a few ramifications for privacy rights advocates and e-commerce businesses alike.

Written by Andrei Teju, IP Innovation Clinic Fellow and JD Candidate at Osgoode Hall Law School

 

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