Trademark Law Reform and the Reasonable Rideau Canal Skater – David Vaver’s keynote at “Following the Signs”

Posted on Wednesday, May 24, 2017

Author: Chelsey Colbert, JD 2017

This blog post is part of series written by students who attended “Following the Signs: New Directions in Trademark Law”, a symposium on the new Canadian trademark framework hosted by the Centre for Law, Technology and Society on May 8th, 2017.

The video recording of Prof. David Vaver’s keynote “Towards a Distinctive Trademark Law for the 21st Century” is available here.

The Symposium kicked off with a keynote from David Vaver where he critiqued trademark law and provided solutions for trademark reform by focusing on the three areas of policy and law-making that often go awry: style, content, and process.


The Reasonable Rideau Canal Skater

Using the reasonable Rideau Canal skater as the “reasonable person”, Vaver illustrated these problems through five main points on how the government can improve the style, content, and process of IP reform.

First, intellectual property law is an entirety. While the rationale for each property right is not identical, they are all designed to support innovation - a current government priority. Structurally, the IP rights all share some characteristics, like ownership and enforcement, that must be understood when reforming each part of IP. Vaver argued that we legislate for trademarks without thinking about how similar issues are legislated in copyright, and this is a mistake.

Second, even though trademark is a type of property, lawmakers should not let this drive the policy. Unlike your car, if someone takes your trademark you still have it. You can still use the trademark and can still sell goods under the name.

Third, intellectual property is an exception to the general rule of free trade and competition, thus any narrowing or restrictions must be justified. Trademark as a whole can be justified as an exception to this general rule when it is used to prevent fraud and confusion, but not all features of trademark law can be justified as such. For example, an allegation of depreciation of goodwill allows an owner to stop even non-confusing goods that are likely to cause harm to their brand’s image. Vaver argued this has nothing to do with preventing harm and it prohibits things a free market normally encourages.

Fourth, intellectual property law must be balanced, and trademark law is no exception. The law must fairly reconcile the owner, users and the public, and other competitor’s rights and interests. Trademark policy is about how to best achieve this balance.

Lastly, Vaver drew on his first point to argue that IP laws should reflect a coherent policy of all of its parts. Integrating trademark law into IP policy should be a priority. Vaver wondered whether a single IP code that deals with cross-cutting issues should replace the different Acts. This single code would have special variations for trademark that are justified by special considerations. There are three beneficial features to a coherent policy: first, it exposes each IP to the policy of others; second, it would add certainty and consistency, while removing deadweight costs; third, this would make IP law more comprehensive and approachable.


The Content, Style, and Process of Trademark Law

If we accept that Canadian IP law should reflect a coherent policy, then we should ask how a particular issue has been handled elsewhere and whether it should apply to trademarks. For over a decade, the Supreme Court of Canada has consistently referred to users’ rights as defences and exceptions to copyright infringement (i.e. fair dealing). Yet, these express users’ rights are harder to find in the Trade-marks Act. Vaver noted that there are two at the end and they have been mostly unchanged since 1953. The right to repair, which is not found in the Copyright Act nor the Trade-marks Act, should be made clear. We assume that you can repair your Ford Focus and sell it under the original name, but we should say so explicitly, not interpret so through obscure language. Vaver argued this language has been accepted because we have focused on the owner’s rights, not the user’s, which must change.

The style of IP law is unnecessarily technical, but is this because trademarks are inherently technical? Some argue that laws are not written to be read, they are written to tell people what they can and cannot do, thus law’s style should follow its function. However, this makes user-friendliness a low priority and even breaches the Rule of Law since laws should be written in an accessible way so that the people who are affected can understand it and feel confident in their legal system. Vaver suggested that legislators should have non-lawyers review their work and offer suggestions on how to make it clearer. Finally, the process of making trademark law and policy must be chosen carefully with the policy goals of content and style in mind.

The two main takeaways for the government here are that the reasonable skater should be involved (the person who uses and is affected by the trademark system) and a committee should be composed of members who can make an integrated user-friendly law. Vaver pointed out a few of the ways trademark law can be improved. The Trade-marks Act should include express and clear user rights which reflect freedom of expression. Trademark law can also do better to represent the cultural diversity of the marketing landscape in Canada. For example, the current Act only deals with the French and English languages and with Euro script. This simply does not reflect the current cultural landscape of the country. Finally, to address access to justice issues, trademark actions should be able to proceed in small claims court. The reasonable Rideau Canal skater should be able to understand if and how the Trade-marks Act applies to them. They should know their rights as a consumer and be able to more easily and inexpensively make a claim. Innovation is a great priority for the current government, but it should not overshadow the importance of a user-friendly law that protects freedom of expression, promotes free trade and competition, and respects the Rule of Law.

Prof. David Vaver, CM, is Professor of Intellectual Property Law at Osgoode Hall Law School of York University, Toronto, Emeritus Professor of Intellectual Property & Information Technology Law in the University of Oxford, and former Director of the Oxford Intellectual Property Research Centre. He founded the Intellectual Property Journal in 1984 and has written extensively on national and international intellectual property law, including Intellectual Property Law: Copyright, Patents, Trade-marks, 2nd ed. (Irwin Law, 2011) and editing Intellectual Property Rights: Critical Concepts in Law (Routledge, 2006, 5 volumes). A Festschrift to him appeared in 2010 edited by Dr Catherine Ng, Professor Lionel  Bently & Dr Giuseppina D’Agostino, The Common Law of Intellectual Property: Essays in Honour of Professor David Vaver (Hart Publishing). In 2016 he was awarded the Order of Canada for “his leadership in intellectual property law as a scholar and mentor.”

Chelsey Colbert is a graduate (JD 2017) of the University of Ottawa, Faculty of Law, Common Law Section. Throughout law school, Chelsey was on the executive of the Law and Technology Student Society, and was regularly involved with the Centre for Law, Technology and Society. She is an aspiring tech lawyer, with plans to work in the areas of IP, privacy, robotics, and machine intelligence. 

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