A recent (though not yet in force) amendment to Canada’s Trade-marks Act will permit an unprecedented purging of trademark records in Canada. This destruction of records should be understood within the disturbing context described in a recent Maclean’s article by Anne Kingston, titled “Vanishing Canada: Why We’re All Losers in Canada’s War on Data”.
The new section 29.1 is aptly titled “Destruction of Records”. It provides that, notwithstanding the Registrar’s duty to maintain trademark data and documentation for public view, the Registrar may still destroy a broad range of documents. These can include applications for trademarks that are refused or abandoned, documents relating to trademarks that have been expunged, documents relating to any request for public notice to be given of an official mark that has been abandoned, refused or invalidated, and documents relating to objections to geographical indications that are removed from the list of geographical indications. All of these documents may be destroyed 6 years after the final action on the file.
Since 1997, the Registrar has been maintaining an electronic register of trademarks. This register is publicly accessible and searchable. However, it does not provide electronic access to the underlying documentation relating to the registrations. This information has nonetheless been available for public consultation, and is also available through access to information requests. While it is now possible to file trademark applications online, thus replacing paper with digital documents, this option has not always been available and there is still a great deal of paper floating about. All this paper obviously takes up a significant amount of space. How should the problem be addressed? One option is to begin the process of digitization; paper records can be destroyed once digital copies are made. Digital copies would also allow for a vastly improved level of access. Another option is to just chuck it all out. It is this latter option, cheap and easy, that will be implemented by the new section 29.1 of the Trade-marks Act.
Of what use are the records at issue? Trademark lawyers have argued that information about past trademark applications – including those refused by the Registrar – is often used in trademark opposition proceedings and in litigation. The International Trademark Association (INTA) opposed section 29.1 in a written submission to the Parliamentary Committee that studied the Bill that introduced this provision. INTA stated that “the downside risk of losing public access to these documents outweighs the hardships to the Canadian Intellectual Property Office associated with maintaining those records.” INTA also noted that the Canadian approach was out of line with that in the United States and in Europe. INTA argued that the destruction of paper records should only take place after electronic copies have been made. The United States, for example, has created a searchable online resource to provide access to all of its records relating to all trademark applications, registered trademarks, Madrid Protocol applications and international registrations.
In addition to the relevance of this information to trademark practitioners, the soon to be destroyed information has research value as well. Canadian trademark law is a relatively under-researched area of Canadian intellectual property law. It would be a great shame if large volumes of data disappear just as research in this area begins to mature and expand.
What might a researcher distill from these records? Here’s one example. Official marks have long been criticized for giving “public authorities” an almost unlimited power to carve out trademark space for themselves without any of the usual checks and balances put in place to manage trademark monopolies in the public interest. Many official marks for which public notice has been given by the Registrar have later been invalidated by the courts either on the basis that the “public authority” seeking public notice was not really a public authority or on the basis that they had not actually adopted or used the mark in question. Once s. 29.1 takes effect, the paper records relating to official marks that have been invalidated will disappear after 6 years. The Registrar has become more rigorous in her examination of requests for official marks (within the limits of a law totally lacking in rigour in this respect). Because there is no application process for official marks, all that appears in the register of trademark is the actual public notice in successful cases. Records relating to failed requests for public notice will soon be subject to destruction after 6 years. This means that this information will disappear entirely and without a trace. What public authorities have sought official marks that have been refused? What was the basis for the refusal to give public notice? What entities claiming to be public authorities have attempted to get trademark protection through this avenue? What might the answers to these questions tell us about a regime that is badly in need of reform? The answers to these questions will become unknowable once s. 29.1 takes effect and the wholesale destruction of records begins.
Digitization of records is expensive, time-consuming and labour intensive. But if paper records are destroyed before digitization takes place there is simply no way to recreate the information. It is lost forever. I have given only a few examples of the potential relevance of the information that is set to be destroyed once s. 29.1 comes into force. Let’s hope it never does. The concepts of open government and open data are only meaningful if there is something left to see once the doors are opened.