Skip to content

In-house lawyers look to tidy up IP, employment issues

New year will see Trademark Act changes impact departments
|Written By Jennifer Brown
In-house lawyers look to tidy up IP, employment issues

The new year is always a good time to take stock and do some tidying up. In speaking to some in-house counsel it seems they all might benefit from the legal department equivalent of applying Japanese consultant Marie Kondo’s philosophy around decluttering when it comes to IP issues and labour and employment law challenges — take inventory and find order around the various patents and trademarks and employment law legislative challenges that linger in the corners.

For certain, IP is going to be a major focus at The Green Organic Dutchman Holdings Ltd. and in the cannabis industry generally, going into 2019 and beyond, says Anna Stewart, general counsel for the cannabis company.

“For a product that’s been around for thousands of years, surprisingly little scientific data exists,” says Stewart who indicates TGOD, based in Mississauga, Ont. will be focusing significant efforts and resources on research and development, seeking to develop novel strains, product delivery systems and formulations as well as breeding and cultivation techniques to optimize plant health and yield.

“Ensuring we maximize the protections available at law for our proprietary data and discoveries will be of utmost importance, and our biggest challenge will be in implementing a comprehensive multi-jurisdictional IP strategy that engages all the forms of IP protection available and in the right mix for our unique brand of organic cannabis products,” she says.

Stewart is also aware that the Trademark Act coming into force could require added attention. “We have been working on registering our trademarks under the existing regime to benefit from the 15-year term, which will be reduced to 10 years for registrations following the coming into force of the new Act.”

With the elimination of the “use” requirement, TGOD also wants to ensure its marks are protected and not vulnerable to trademark squatters, which may become an issue under the new regime. “While there are some benefits to registration prior to the coming into force date of the new Act, there will be some efficiencies and simplicity gained by Canada’s adoption of the Madrid Protocol, which will streamline the application process across a number of jurisdictions and will be beneficial to TGOD as we continue to grow our international footprint,” she says.

 For Melissa Reiter, director, legal and privacy officer at travel company G Adventures, the focus will be paying close attention to the proposed changes to the Trademarks Act, expected to come into force in June of 2019.

“From our logos and branding to our unique trip itineraries — these make up a big part of the value of our business and we want to make sure we are ready for the changes and fully understand any changes we will need to make to internal processes before they take effect,” says Reiter.

Some of the changes are significant, she says. “For example; Canada joining the Madrid protocol, changes to trademark classifications and changes to the use requirements for trademarks which will be an adjustment for us and other businesses.”

Reiter works witih outside counsel on its trademarks registrations, and says she will be looking for advise on how to improve G Adventures’ internal processes to correspond with the changes.

“We do business in jurisdictions that are already part of the Madrid Protocol, but there will be nuances and unique elements to the Canadian process that we would not want to approach without the specialized knowledge of our IP counsel,” she says.

On the employment side, Reiter says the company has no plans to change its position on benefits that it had already rolled out based on the Ontario Liberal government’s legislation. “As a social enterprise, our focus is on our quirtuple bottom line of people, planet, profit, passion and purpose, so we might be looking at this a little differently than other employers.”

Catherine Scott, chief legal officer at PayByPhone in Vancouver says the decision around making someone a, full-time employee, part-time or contractor is something debated quite a bit with her internal clients. Another is reasonable accommodation on different requirements around both physical and mental health issues.

“The other major thing we’re dealing with is setting policies on certain matters,” she says. “For example, anti-bullying/anti-harassment policies and updating those policies around what the legal landscape is and what corporate policy should be. Because of the change in the law around marijuana that is now an interesting one to navigate around.”

With edibles becoming legal this fall, will having cannabis edibles be the same as having a beer in the office on a Friday? “That’s one we had a request to get external counsel opinion on,” she says.

When it comes to obtaining outside legal advice, Stewart says she does engage external counsel on matters related to IP. “I’ve found the most effective strategy for external counsel generally is to rely upon a mix of national and boutique firm support,” she says.

Her theory is that consolidating a bulk of work with a national firm provides the benefits of a one-stop shop and having a team with varying specialties within one firm generally facilitates an in-depth and holistic approach, as the team benefits from learning our business from multiple angles. “However, I’ve had great success working with boutique firms as well, where there is often great expertise in a particular area. I generally make the call on a mandate by mandate basis, considering all factors relevant to the particular matter.”

Smaller boutiques are an option that Charles Whitburn, vice president and general counsel of Points International, has been given consideration to using and would like to consider more if they can scale to what he needs. Points has patents and trademarks to deal with in multiple jurisdictions. He says he wants external advice that will help him understand what the risk parameters area associated with certain IP assets and in pursuing a patent in one jurisdiction and not another.

What he’s seeking are “crisp answers” to his IP questions from outside counsel.

“I just want some help putting some good thought into this, so I can develop a good IP strategy,” he says. “I’m not buying a service, I’m buying a solution. You can service the heck out of something, but if there’s no solution to it it’s very frustrating.”