Canadian Compliance
Essentials
What U.S. companies coming to Canada need to know
about advertising, competition & privacy ...
Topics include
1. Trade-mark protection
2. Québec-specific laws
3. Employment and labour issues
4. Contests and promotions...
Gowlings at a glance
• One of Canada’s largest
law firms
• Over 750 professionals
across 10 offices
worldwide
• Recognized...
Gowlings at a glance
www.gowlings.com
4
Canadian Compliance Essentials
• Canada and the US have a lot in common but have
two distinct legal systems
• Today’s webi...
1. Trade-mark registration
• Why register your mark?
• By virtue of using your trade-mark you can generate
rights; however...
1. Trade-mark registration
• When should you consider a Canadian trade-mark?
• As early as possible
• Consider the Canadia...
1. Trade-mark registration
• Advantages of applying for a trade-mark
• Some “free enforcement” at the Trade-marks Office l...
2. Québec-specific laws
• Packaging and labelling
• Every inscription on the product or on materials (e.g.
label, tag, war...
2. Québec-specific laws
• Trade-mark exceptions
• The Charter of the French language specifically exempts
“recognized trad...
3. Employment and labour issues
• Main differences between the U.S. and Canada
• In Canada, we do not have the concept of ...
4. Contests and promotions
• What you need to know about running contests
• Voting is susceptible to cheating – you need s...
4. Contests and promotions
• Peculiarities about Canadian contest law
• In Canada, you are required to have an element of ...
5. Time on sale and pricing practices
• Amendments to Competition Act in 2009 – Canada
moved from having some of the stric...
5. Time on sale and pricing practices
• RPM (resale price maintenance)
• Unless the producer or supplier has a degree of m...
5. Time on sale and pricing practices
• No AMPs for RPM unless the test for abuse of
dominance is also met
• Remedy = an o...
5. Time on sale and pricing practices
• Advertising a sale
• Ensure you have a comparison with the ordinary selling
price
...
6. Misleading advertising
• Competition Act and how it works
• The federal Competition Act is the primary statute
regulati...
6. Misleading advertising
• Criminal
• Typically reserved for egregious cases such as fraud
• Includes a general provision...
6. Misleading advertising
• Civil
• No requirement that conduct was engaged in “knowingly
or recklessly”
• Penalties inclu...
7. Competition Bureau enforcement priorities
• Increased enforcement in recent years
• The Bureau has placed considerable ...
7. Competition Bureau enforcement priorities
• The Bureau’s practical enforcement priorities
include:
• False or misleadin...
8. Comparative advertising
• Key things to remember
• Always substantiate your claims!
• Claims regarding performance, eff...
8. Comparative advertising
• Copyright Act
• Prohibits the reproduction of a substantial part of another
party’s protected...
8. Comparative advertising
• Trade-marks Act
• Section 7(a): No person shall make a false or misleading
statement tending ...
9. Social media
• Privacy
• Canada’s federal privacy statute (Personal Information
Protection and Electronic Documents Act...
10. Canada’s new anti-spam laws (CASL)
• Expected to come into force in 2014
• Could lead to a significant increase in the...
10. Canada’s new anti-spam laws (CASL)
• Important differences between CASL & CANSPAM
• CASL applies to more than email me...
10. Canada’s new anti-spam laws (CASL)
• Key points from a privacy litigation perspective
• Will create administrative mon...
10. Canada’s new anti-spam laws (CASL)
• Key points from a litigation perspective (cont’d)
• CASL will also extend the pri...
To view our webinar titled:
Canadian Privacy and
New Anti-spam Laws:
What You Need to Know to Comply
Click on the link in ...
Q&A
32
Thank You
montréal  ottawa  toronto  hamilton  waterloo region  calgary vancouver  beijing  moscow  londo...
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Canadian Compliance Essentials: What U.S. companies coming to Canada need to know about advertising, competition & privacy law

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Canadian Compliance Essentials: What U.S. companies coming to Canada need to know about advertising, competition & privacy law

  1. 1. Canadian Compliance Essentials What U.S. companies coming to Canada need to know about advertising, competition & privacy law
  2. 2. Topics include 1. Trade-mark protection 2. Québec-specific laws 3. Employment and labour issues 4. Contests and promotions 5. Time on sale and pricing practices 6. Misleading advertising 7. Competition Bureau enforcement priorities 8. Comparative advertising 9. Social media 10. Canada’s new anti-spam legislation (CASL) 2
  3. 3. Gowlings at a glance • One of Canada’s largest law firms • Over 750 professionals across 10 offices worldwide • Recognized expertise in business law, advocacy and intellectual property law 3
  4. 4. Gowlings at a glance www.gowlings.com 4
  5. 5. Canadian Compliance Essentials • Canada and the US have a lot in common but have two distinct legal systems • Today’s webinar will highlight some of the similarities and significant differences between the two legal systems 5
  6. 6. 1. Trade-mark registration • Why register your mark? • By virtue of using your trade-mark you can generate rights; however, these are limited in geographic scope • Registration gives you the exclusive right to use the mark across Canada in association with the products and services listed in the registration • Applying for a trade-mark provides public notice of your intention to adopt the mark on a searchable public database (free deterrent system) 6
  7. 7. 1. Trade-mark registration • When should you consider a Canadian trade-mark? • As early as possible • Consider the Canadian market in conjunction with the U.S. • You can apply to register the mark on an “intent to use” basis • Be wary of clever Canadians that may apply for the mark in Canada before you think about the Canadian market 7
  8. 8. 1. Trade-mark registration • Advantages of applying for a trade-mark • Some “free enforcement” at the Trade-marks Office level • Public searchable database • Examiners will block confusing trade-mark applications 8
  9. 9. 2. Québec-specific laws • Packaging and labelling • Every inscription on the product or on materials (e.g. label, tag, warranty, etc.) must have equally prominent French and English • Commercial advertising in Québec must use French language in a 2:1 ratio • Catalogues, brochures, folders, commercial directories and any similar publications must be drawn up in French, subject to certain exceptions 9
  10. 10. 2. Québec-specific laws • Trade-mark exceptions • The Charter of the French language specifically exempts “recognized trade-marks” from the requirement to translate into French • The enforcement office currently takes the position that the marks must be registered to benefit from exemption 10
  11. 11. 3. Employment and labour issues • Main differences between the U.S. and Canada • In Canada, we do not have the concept of employment “at will” • Employment law is a provincial responsibility, except for employees working in a federally regulated industry (approx. 10% of Canadian workforce) 11
  12. 12. 4. Contests and promotions • What you need to know about running contests • Voting is susceptible to cheating – you need safeguards • Problems with “instant win” – alphanumeric codes can be broken 12
  13. 13. 4. Contests and promotions • Peculiarities about Canadian contest law • In Canada, you are required to have an element of skill in a contest • Specific disclosure requirements under the Competition Act requiring that you disclose in your advertising regional allocation of prizes, retail value, etc. • Québec: Contests must be filed in advance, pay a duty and potentially post a security bond • French Charter requirements 13
  14. 14. 5. Time on sale and pricing practices • Amendments to Competition Act in 2009 – Canada moved from having some of the strictest criminal provisions dealing with pricing practices to among the most liberal regimes in the world • Price discrimination and predatory pricing will only be problematic where engaged in by a dominant firm or group of firms with anti-competitive intent, and where that conduct is likely to substantially lessen or prevent competition in the relevant market • May still attract significant administrative monetary penalties (AMPs) – up to $10 million for a first offence and up to $15 million for repeat offences 14
  15. 15. 5. Time on sale and pricing practices • RPM (resale price maintenance) • Unless the producer or supplier has a degree of market power, is not acting unilaterally and/or is causing an adverse effect on competition from imposing a minimum resale price, RPM is ok under Canadian law • A producer or supplier of a product who does not have a degree of market power and is acting unilaterally can: • Tell retailers and other resellers “you will put your prices up or we will stop supplying you” • Tell retailers and resellers they have to advertise a particular price; that they can’t discount; and that they can’t advertise a discount ...as long as there is no adverse effect on competition 15
  16. 16. 5. Time on sale and pricing practices • No AMPs for RPM unless the test for abuse of dominance is also met • Remedy = an order prohibiting the producer or supplier from continuing to engage in that conduct • Except for the largest producers and suppliers, there is now far more latitude and flexibility in structuring and implementing vertical pricing practices in Canada 16
  17. 17. 5. Time on sale and pricing practices • Advertising a sale • Ensure you have a comparison with the ordinary selling price • You must have sold your goods at this price for the majority of the time the product has been sold or have sold the majority of the volume at this price • Ensure your sale does not run for more than 90 consecutive days 17
  18. 18. 6. Misleading advertising • Competition Act and how it works • The federal Competition Act is the primary statute regulating advertising and marketing practices in Canada • Designed to regulate activity that may have anti- competitive effect, such as mergers, collusive behavior, price-fixing and misleading advertising • Advertising and marketing practices regulated on dual- track basis – criminal / civil misleading advertising regime • The core of both tracks is the same – prohibition against making a representation to the public that is false or misleading 18
  19. 19. 6. Misleading advertising • Criminal • Typically reserved for egregious cases such as fraud • Includes a general provision that prohibits materially false or misleading representations made knowingly or recklessly • Potential penalties include fines in discretion of court and up to 14 years imprisonment 19
  20. 20. 6. Misleading advertising • Civil • No requirement that conduct was engaged in “knowingly or recklessly” • Penalties include an AMP of up to $10 million for a first violation, and up to $15 million for any subsequent violation • Other potential remedies include corrective advertising, prohibition orders and restitution to consumers 20
  21. 21. 7. Competition Bureau enforcement priorities • Increased enforcement in recent years • The Bureau has placed considerable emphasis on enforcement of the misleading advertising provisions in recent years • Follows dramatic increase in 2009 in severity of penalties for both criminal and civil misleading advertising • Shift in focus from criminal cases involving fraudulent advertising schemes to high-profile civil cases involving mass marketing 21
  22. 22. 7. Competition Bureau enforcement priorities • The Bureau’s practical enforcement priorities include: • False or misleading online testimonials • False or misleading disclaimers • Unsubstantiated performance claims 22
  23. 23. 8. Comparative advertising • Key things to remember • Always substantiate your claims! • Claims regarding performance, efficacy or length of life of product require adequate and proper testing prior to making the claim • Advertising Standards Canada (ASC) – self regulatory body that administers the “Canadian Code of Advertising Standards” • Alternative to costly court processes 23
  24. 24. 8. Comparative advertising • Copyright Act • Prohibits the reproduction of a substantial part of another party’s protected work • Can include artistic works such as logos and packaging designs • The Copyright Act allows the plaintiff to pursue you for damages or an accounting of profits; statutory damages available as well 24
  25. 25. 8. Comparative advertising • Trade-marks Act • Section 7(a): No person shall make a false or misleading statement tending to discredit the business, wares or services of a competitor • Applies to registered and unregistered trade-marks • Section 22: No person shall use a trade-mark registered by another person in a manner that is likely to have the effect of depreciating the value of the goodwill attaching to that mark 25
  26. 26. 9. Social media • Privacy • Canada’s federal privacy statute (Personal Information Protection and Electronic Documents Act or PIPEDA) requires consent from an individual before you can collect, use or disclose an individual’s personal information (which includes email addresses) • Intellectual property • Canadian copyright law does not have a “safe harbour” provision, so you need to include a UGC posting policy and moderate vigilantly 26
  27. 27. 10. Canada’s new anti-spam laws (CASL) • Expected to come into force in 2014 • Could lead to a significant increase in the number and importance of individual and class action privacy cases in Canada • Will prohibit sending commercial electronic messages, unless the sender has the prior express or implied consent of the recipient 27
  28. 28. 10. Canada’s new anti-spam laws (CASL) • Important differences between CASL & CANSPAM • CASL applies to more than email messages • CASL will be an “opt-in” consent regime, while CANSPAM is “opt-out” • CASL will set higher maximum penalties for violations 28
  29. 29. 10. Canada’s new anti-spam laws (CASL) • Key points from a privacy litigation perspective • Will create administrative monetary penalties and a private right of action in respect of unsolicited commercial electronic messages • AMPs as high as $1 million (individuals) and $10 million (corporations) • Compensation in an amount equal to the actual loss or damage suffered and statutory damages of up to $1 million for each day on which a contravention occurred 29
  30. 30. 10. Canada’s new anti-spam laws (CASL) • Key points from a litigation perspective (cont’d) • CASL will also extend the private right of action for compensatory and statutory damages to breaches of PIPEDA • CASL will add both civil and criminal provisions to the Competition Act with severe penalties 30
  31. 31. To view our webinar titled: Canadian Privacy and New Anti-spam Laws: What You Need to Know to Comply Click on the link in the resources tab of the webinar portal 31
  32. 32. Q&A 32
  33. 33. Thank You montréal  ottawa  toronto  hamilton  waterloo region  calgary vancouver  beijing  moscow  london Visit: www.gowlings.com Email: brenda.pritchard@gowlings.com brian.fraser@gowlings.com shelagh.carnegie@gowlings.com davit.akman@gowlings.com

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