The Foreign Investment Review Committee of the CBA’s Competition Law Section will be holding a Foreign Investment Review Conference in Toronto on June 1st (an “informative discussion on the law and policy issues involved in navigating transactions through Canada’s foreign investment review regulatory process”).
Guests from Industry Canada and Canadian Heritage will include Jenifer Aitken (Director General, Investment Review and Strategic Planning Branch, Industry Canada) and Missy Marston-Shmelzer (Deputy Director of Investments and Director, Cultural Sector Investment Review, Canadian Heritage).
For more information see:
by Andrei Mincov (originally posted at Mincov Law Blog)
One of the most common misconceptions surrounding the law of trademarks in Canada is how trademarks relate to trade names. This misconception can have very costly consequences.
Trade names are used to identify a business or a company. Trade names are the “who” of the business. Customers do business with a business bearing the trade name.
Trademarks are used to identify products or services. Trademarks are the “what” of the business. Customers buy products and services bearing the trademark.
In very simplistic terms, customers buy trademarks from trade names.
Every business registered with the Registrar of Companies or incorporated (provincially or federally) has a trade name. But neither the reservation of a corporate name nor the formation of a corporation create a right to use the business name of the corporation in that jurisdiction.
How can that be? The government registers my business name and I can’t use it? Yes. Unfortunately, corporate registries don’t really check if the name submitted for the registration violates any prior rights. In other words, just because a provincial corporate registry approved your name for registration does not mean that you don’t violate someone else’s prior right (in a trade name or a trademark) and that you will not be compelled to change it in the future.
Rights in corporate names are treated like rights in unregistered trademarks, which means that they are nonexistent outside the geographical areas where the business is actually making use of and it known for its name.
Even if you register a corporate name that no one else had thought of before, it does not give you the right to stop others from using it, unless you can prove that other person’s use of the name creates confusion.
Just because you came up with a fancy company name that helps you attract customers for whatever products or services you are offering does not mean that your name, or brand, is a trademark. If you are not using your trade name as a trademark, your don’t have trademark protection for your trade name.
Trade name can be registered as a trademark, but only if you use it as such, that is, to identify products or services. This is often referred to as using the trade name as an adjective, as opposed to a noun.
Let’s say, your company is called Awesome Software Inc. and you make software. If you phrase your marketing materials to say that “Awesome Software Inc. offers such great titles as Text, Calculator and Presentations”, you are using “Awesome Software” as a trade name. If you phrase them to say “We offer Awesome Software™ Text, Awesome Software™ Calculator and Awesome Software™ Presentations”, then you are using “Awesome Software” as a trademark.
The classic example is, of course, Microsoft® Windows®. We don’t buy Microsoft, we buy from Microsoft. But because “Microsoft” is a part of the name of the product we buy (and part of the reason why we buy it), it is also protected as a trademark in its own standing.
If you believe that a substantial number of your customers are attracted to your business because of your trade name, you should consider using the trade name as a trademark and getting it registered as a trademark.
In other words, if you consider your trade name a factor that gives you a competitive advantage, you should not rely merely on registration of the company name with the Registrar of companies. You should accord the asset that you care about the protection that it deserves, and the only way to do it is through registering it as a trademark.
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CANADIAN CONTEST RULES/PRECEDENTS
Do you need contest rules and forms for a Canadian contest/sweepstakes? I offer a selection of Canadian contest rules and forms for random draw, skill and other common types of Canadian contests (i.e., contest precedents and forms). For more information see Canadian Contest Forms/Precedents.
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The Canadian Institute is hosting an upcoming contest conference entitled “Managing Legal Risks in Running Online Contests” on June 21-22 2012 in Toronto. Their conference will include discussions on topics that include minimizing the risks of operating online contests, online voting contests, operating Facebook and Twitter contests, mobile contests and mitigating risk when online contests go wrong.
In March, 2009, sweeping amendments to the Competition Act came into force that included, among many other things, the introduction for the first time in Canada of monetary penalties for abuse of dominance (“administrative monetary penalties” or “AMPs”). Under Canada’s amended section 79, the Competition Tribunal may now order AMPs of up to $10 million ($15 million for subsequent orders).
Since that time, one contested abuse case has proceeded to the Competition Tribunal (the Bureau’s ongoing challenge against The Toronto Real Estate Board, in which the Bureau is seeking only remedial remedies not AMPs) and two new versions of the Bureau’s Abuse of Dominance Enforcement Guidelines have been issued for comment (the current draft version of which, while setting out when the Tribunal may order AMPs in abuse cases, provides no guidance as to when the Bureau will seek them).
On May 15, 2012, the C.D. Howe Institute’s Competition Policy Council issued a report, the result of its third meeting on May 7, 2012, calling for the Bureau to clarify its position as to when it will seek AMPs in abuse cases. (Unlike some provisions of the Act, in Canada the Bureau has exclusive jurisdiction to bring and prosecute abuse cases, which are heard before the federal Competition Tribunal.)
In issuing the Report, the C.D. Howe Institute’s Council said:
“The Competition Bureau should clarify how it will apply its powers under the Competition Act in seeking administrative monetary penalties for abuse of dominance, according to a consensus of the C.D. Howe Institute’s Competition Policy Council, which held its third meeting on May 7, 2012. …
There was a range of views among the Council members about whether AMPs for abuse of dominance are ever appropriate. Some members contended that AMPs are appropriate as a deterrence mechanism. Others expressed the view that the possibility of a firm’s being subject to AMPs would chill efficient arrangements. There was unanimity, however, on the point that the risks of over-deterrence associated with AMPs are real, and that it would be appropriate to know how the Bureau plans to approach the issue of AMPs in particular cases. Accordingly, the Council’s key recommendation is that the Competition Bureau issue guidance and explain the basis on which it will assess the AMPs it seeks.”
Some of the issues discussed in the Council’s Report include the constitutionality of AMPs (as yet to be determined) and a more reticent Bureau in terms of its abuse of dominance enforcement positions.
With respect to the latter, the Commissioner of Competition has indicated in recent public remarks that the markedly shorter draft Abuse Guidelines currently subject to public comments is an effort to let the Competition Tribunal, not the Bureau, decide where the boundaries of section 79 lie (which provides little comfort to firms given that there have only been about ten contested abuse cases since the modern Competition Act was introduced in 1986).
For a copy of the C.D. Howe Institute’s news release and Report see:
The following are a few upcoming competition/antitrust law conferences:
American Bar Association Financial Services and Competition (New York: June 7, 2012): Financial Services and Competition.
13th annual Civil Liberties and Competition Policy conference (Washington: June 21, 2012): Civil Liberties and Competition Policy.
Georgetown Law 6th Annual Global Antitrust Enforcement Symposium (Washington: September 19, 2012). Canada’s Commissioner of Competition will be speaking at this conference: Antitrust Enforcement Symposium.
39th Fordham Conference (New York – September 20-21, 2012): Annual Conference on International Antitrust Law and Policy.
The following are a few competition and regulatory law developments that caught my eye today:
The Saskatchewan Government issued a review report on the proposed Glencore/Viterra transaction calling for, among other things, conditions to ensure compliance with Glencore’s Investment Canada Act commitments and a review of potential competition concerns in the retail (i.e., crop input) markets: Government Releases Review of Glencore Acquisition of Viterra
The OECD issued a new Procedural Fairness and Transparency Report, which includes recent Competition Bureau transparency initiatives: Procedural Fairness and Transparency – Key Points 2012
The International Trade Minister delivered remarks to the Canadian Manufacturers & Exporters (BC) about the new Canada-EU trade agreement: International Trade Minister Ed Fast Highlights Benefits of Canada-EU Trade Agreement to Canadian Manufacturers & Exporters
The Canadian Council of Chief Executives has commented on competition and infrastructure in Canada to supply Chinese energy needs: Canada: Competing for China’s energy needs
The CRTC’s Executive Director of Broadcasting addressed innovation and competition in local radio and television markets in BC: Speech to the 65th annual conference of the British Columbia Association of Broadcasters
The Competition Bureau issued its April Monthly Merger Review Report: Merger Review Report
On May 11, 2012, the Saskatchewan Government published a review report on the proposed Glencore/Viterra transaction. In issuing the report, Saskatchewan’s Agriculture Minister called for conditions to “hold Glencore” to its Investment Canada Act commitments and also indicated that one competition concern included competitive effects relating to Agrium and the farm inputs (i.e., retail) markets.
Saskatchewan is calling for the following, among other things, as part of Investment Canada Act approval: Regina as Glencore’s North American headquarters, maintaining current levels of employment, a five year increase in capital investment of C $100 million and no adverse competitive effects in the farm input (i.e., retail) markets (competition is one of the relevant net benefit to Canada factors under section 20 of the Investment Canada Act).
For the Saskatchewan Government’s news release and report see:
Review of the Proposed Glencore Acquisition of Viterra and Related Transactions
The OECD has published a new booklet (Procedural Fairness and Transparency – Key Points 2012) that summarizes three roundtable discussions on transparency and procedural fairness in 2010 and 2011, as part of the OECD’s Competition Committee’s Working Party No. 3. The OECD’s booklet summarizes 82 written submissions, eight presentations by various national delegations and commentary from competition law practitioners and experts.
The OECD’s booklet also includes discussions of recent transparency related initiatives by the Canadian Competition Bureau including new compliance, merger and Immunity Program related guidelines; the Bureau’s transparency self-assessment (began in 2010, which has resulted in, among other things, its new monthly Merger Registry and merger statements); areas of improvement with respect to transparency (including in relation to merger review and the review of the Bureau’s consent agreement process); and the Bureau’s policies relating to the exchange of confidential information with international agencies.
For a copy of the OECD booklet see:
Templates/precedents and checklists to run promotional contests in Canada
Templates/precedents and checklists to comply with Canadian anti-spam law (CASL)
