Supreme Court of Canada Upholds Order for Google to Block Search Results Globally

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By Erin Creber, July 12th, 2017

The Supreme Court of Canada recently issued its decision Google v Equustek (2017 SCC 34) upholding the British Columbia Court of Appeal’s decision to grant an interlocutory injunction requiring Google, a non-party to the underlying action, to block certain search results on its Internet search engine on a worldwide basis. In granting the appeal, the Supreme Court of Canada has held it is within the power of Canadian courts to issue injunctions with extraterritorial effect, so long as it is just and equitable to do so. This is an important decision for intellectual property owners, as it provides a new mechanism to combat infringers.

Background

Equustek is a small technology company based in British Columbia that brought an action against its distributor, Datalink. Datalink had re-labelled one of Equustek’s products and was passing it off as its own. Datalink also acquired confidential information and trade secrets belonging to Equustek and was using this information to design and manufacture a competing product.

The Court issued an interlocutory order prohibiting Datalink from selling its inventory and using any of Equustek’s intellectual property. However, Datalink continued to carry on business from an unknown location, and sell its infringing products via the Internet to customers around the world.

To prevent Datalink from continuing its infringing activities, Equustek approached Google, and requested that Google de-index (i.e. block from search results) all of Datalink’s websites promoting the sale of Datalink’s counterfeit goods.

Google initially refused the request, complying only once a Court order was issued. Pursuant to its internal policies, Google voluntarily blocked individual webpages but not entire websites. Further, Google only blocked Canadian search results.

Datalink easily circumvented the measures taken by Google by simply moving the objectionable content to new webpages within its websites. Throughout this time, Datalink webpages remained available on Google’s non-Canadian search engines, e.g. Google.com.

Consequently, Equustek sought, and was awarded, an order requiring Google to block all Datalink websites globally.

The Decision

In a 7-2 decision, the Supreme Court of Canada upheld the British Columbia Court of Appeal’s ruling that Google must block all Datalink websites on a worldwide basis.

In reaching this decision, the Court considered the RJR MacDonald v Canada three-part test for granting an interlocutory injunction. It was held (i) there was a serious issue to be tried, (ii) irreparable harm would result if the injunction was not granted, and (iii) the balance of convenience did favour granting the injunction.

Justice Abella recognized that the infringing activities in this case were occurring globally, as the Internet has no borders. Google was deemed to be a determinative player in allowing harm to occur to Equustek as a result of Datalink’s activities. Upholding the order against Google was deemed necessary to prevent the irreparable harm that flowed from Datalink carrying on business on the Internet, a business which would be commercially impossible without Google’s facilitation.

Regarding the balance of convenience, the Court rejected Google’s arguments that an injunction cannot be directed at a non-party, an injunction with extraterritorial effect would violate comity, and that the injunction in this case was in effect a permanent injunction. In doing so, the Court indicated that it was within Google’s power to seek an order varying the injunction if there was any risk that compliance with the injunction would violate the laws of another jurisdiction.

Conclusion

This decision confirms that Canadian courts have the ability to issue interlocutory injunctions directed against non-parties, and signifies the Supreme Court of Canada supports the broad implementation of such injunctions, provided it is just and equitable to do so.


For more information please contact:

Erin Creber, Associate, Trademark Agent

T: 613.801.0044

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The Supreme Court of Canada Knocked Down the "Promise Doctrine” for Determining Utility

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By Suzanne Hof and Poonam Tauh, June 30th, 2017

Today, the Supreme Court of Canada, in AstraZeneca Canada Inc. v. Apotex Inc., 2017 SCC 36, has determined that the Promise Doctrine is not the correct method of determining whether the utility requirement under s. 2 of the Patent Act is met, and upheld the utility of the appelants’ 2,139,653 patent.

The Promise Doctrine holds that if a patentee’s patent application promises a specific utility, only if that promise is fulfilled, can the invention have the requisite utility, but where no specific utility is promised, a mere scintilla of utility will suffice.

The Court has found that the Promise Doctrine is excessively onerous in two ways: (1) it determines the standard of utility that is required of a patent by reference to the promises expressed in the patent; and (2) where there are multiple expressed promises of utility, it requires that all be fulfilled for a patent to be valid.

First, the Court found that the Promise Doctrine conflates s. 2 of the Act (which requires that an invention be “useful”) and s. 27(3) (which requires disclosure of an invention’s “operation or use”), by inappropriately requiring that to satisfy the utility requirement in s. 2, any disclosed use (by virtue of s. 27(3)) be demonstrated or soundly predicted at the time of filing. If that is not done successfully, the entire patent is invalid, as the pre-condition for patentability — an invention under s. 2 of the Act — has not been fulfilled.

Second, the Court found that the Promise Doctrine runs counter to the words of the Act by requiring that where multiple promised uses are expressed, they all must be satisfied for the patent to meet the utility requirement in s. 2.

The Court established the correct approach to utility as follows:

  • [54] To determine whether a patent discloses an invention with sufficient utility under s. 2, courts should undertake the following analysis. First, courts must identify the subject-matter of the invention as claimed in the patent. Second, courts must ask whether that subject-matter is useful — is it capable of a practical purpose (i.e. an actual result)?
  • [55] The Act does not prescribe the degree or quantum of usefulness required, or that every potential use be realized — a scintilla of utility will do. A single use related to the nature of the subject-matter is sufficient, and the utility must be established by either demonstration or sound prediction as of the filing date.

With respect to the ‘653 patent, the Court stated that the utility of the optically pure salts of the enantiomer of omeprazole as a proton pump inhibitor to reduce production of gastric acid (the subject matter of the ‘653 patent) was soundly predicted. The ‘653 patent is therefore not invalid for want of utility."

Today’s long-awaited decision places Canada back in-line with international standards, and provides greater certainty to patentees and to patent prosecutors and litigators.

 

For more information please contact:

Suzanne Hof, Senior Patent Agent

T: 613.801.0510

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Poonam Tauh, Senior Patent Agent

T: 403.800.9018

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Update: CASL Private Right of Action Suspended, But Be Careful, Other CASL Provisions Are Still Alive

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By Randy Marusyk and Daniel Lanfranconi, June 26th, 2017

Since our last CASL updated on March 27th, the Canadian federal government announced on June 7, 2017, that it is suspending the private right of action provision in Canada’s Anti-Spam Legislation (CASL). This provision was originally scheduled to come into effect on July 1, 2017. The private right of action provision allows anyone to sue individuals and organizations that violate CASL by either their action or omission. Under CASL’s private right of action, Plaintiffs were able to claim compensatory damages as well as statutory damages. Compensatory damages cover the plaintiff for losses or damages that they have suffered, on the other hand, statutory damages, are provided where no actual harm is proven and can be as high as $1 million per day.

Businesses, charities, and not-for-profit organizations raised concerns that a number of class action lawsuits could result from the private right of action provision. As a result, the federal government suspended the private right of action coming into force and will send this provision to parliamentary committee for review to ensure it balances the individual’s rights with the burden businesses and others will bear as a result of compliance. No date was announced when the committee will render the results of this review.

CASL’s intent is to prohibit businesses and individuals from sending commercial emails to Canadians without their consent. When CASL was introduced on July 1, 2014, it provided a 3-year grace period where implied consent, acquired prior to CASL coming into force, was sufficient. This implied consent must meet two criteria to be valid: the sender had an existing business relationship prior to July 1, 2014 and the sender and recipient had communicated through commercial electronic messages (CEMs) as a part of this relationship. These transitional provisions for implied consent come to an end as of July 1, 2017, and even though the federal government has suspended the private right of action, these other CASL provisions remain in force and are subject to enforcement. As a result, businesses and individuals must obtain express consent and provide unsubscribe methods and electronic communication practices and marketing strategies that comply with CASL.

For more information please contact:

 
Randy Marusyk, Partner

T: 613.801.1088

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Daniel Lanfranconi, B.Eng., M.A.Sc., P.Eng. (Elec Eng), M.B.A., (J.D. Candidate), Summer Law Student

T: 613.801.0456

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Upcoming Amendments to the Patent Rules, Industrial Design Regulations, and the Trademarks Regulations

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By Etienne de Villiers, June 15th, 2017

The Canadian Intellectual Property Office (CIPO) has just announced that it will be conducting a series of consultations on proposed regulatory amendments to the Trademarks Regulations, Industrial Design Regulations and Patent Rules.

The amendments are being proposed to bring Canada’s intellectual property (IP) legal framework in line with international standards. In particular, Canada is in the process of joining five international IP treaties: the Madrid Protocol, the Singapore Treaty, the Nice Agreement, the Hague Agreement, and the Patent Law Treaty.

Amendments to the Trademarks Act, the Industrial Design Act and Patent Act were previously amended to comply with the requirements of these treaties. In order to complete the changes to Canada’s IP legal framework, the accompanying Regulations and Rules must also be amended.

CIPO will be consulting with the IP legal community starting on June 19, 2017 for the Trademarks Regulations and the Industrial Design Regulations. Consultations regarding the Patent Rules are scheduled to start in early August 2017. The proposed amendments will be disclosed during this consultation period, and there will be an opportunity to ask questions and submit questions or comments.

Amending the IP Rules and Regulations is the final step in a major makeover of Canada’s IP legal framework that will bring us closer to the developing international standards. From an IP owner’s point of view, these changes will make it more efficient to obtain patent protection in Canada based on foreign originating applications, and similarly will make it more efficient for Canadians to obtain foreign patent protection based on Canadian originating applications.

For more information please contact:

Etienne de Villiers, Partner

T: 416.995.8655

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Lifting the Cloak of Anonymity of Copyright Infringers Online

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By Scott Miller and Yang Wang, May 30th, 2017

While internet connects people thousands of miles apart and accelerates knowledge distribution, it also creates a cloak under which anonymous users can illegally download and distribute copyright protected materials, such as movies, songs and novels. Previously, copyright owners were unable to protect and vindicate their rights unless internet service providers (ISPs) were willing to disclose the identity of suspected copyright infringers.

The recently modified copyright regime allows copyright owners to seek a disclosure order that compels an ISP to reveal the identity of the suspected copyright infringers.[1] The purpose of which is “to allow copyright owners to protect and vindicate their rights as quickly, easily and efficiently as possible while ensuring fair treatment of all.” [2] Whether or not copyright owners should reimburse the ISPs for the cost related to a disclosure order was left undecided.

In Voltage Pictures LLC v John Doe, the Federal Court of Appeal reviewed the trial judge’s order that Voltage has to pay a fee of $100 per hour of work plus HST to Rogers, the ISP, before the disclosure of identifying information (see our previous article here). Voltage appealed this order and contested this fee as it was far too high and thus unreasonable.

The Court allowed the appeal and ordered Rogers to disclose identifying information to Voltage without seeking compensation. The concern is if ISPs are allowed to charge a fee without restriction before the release of identifying information, the purposes of the Copyright Act would be frustrated. A large service fee could effectively dissuade copyright owners from obtaining the information they need to protect and vindicate their rights.

The Court held the subsection 41.26(1) of the Copyright Act has imposed an obligation that the ISPs “must maintain records in a manner and form that allows it to identify suspected infringers, to locate the relevant records, to send the notices to the suspected infringers and the copyright owner, to translate the records (if necessary) into a manner and form that allows them both to be disclosed promptly and to be used by the copyright owners and later the court to determine the identity of the suspected infringers, and finally, to keep the record ready for prompt disclosure. ”[3]

Furthermore, the Court divided the total cost into two categories: (1) the work necessary to assemble, verify and forward the identifying information to copyright owner pursuant to the subsection 41.26(1) of the Copyright Act; and (2) the actual, reasonable, and necessary cost of delivery or electronic transmission of the information.[4]

For the first category, the Court took a position pursuant to the “no regulation and, thus, no fee” default rule in subsection 41.26(2) of the Copyright Act for the subsection 41.26(1) obligations. It held that the decision of leaving the cost of with ISPs can push them to limit the cost of compliance with their obligation “more automatic, more efficient and less expensive.”[5] For the second category, the Court found that the cost does not fall within the subsection 41.26(1) and thus ISPs can charge this fee. However, it is usually negligible (e.g. $0.5 per IP address in 2012). [6]

The Court also recognized that ISPs can plead their economic case to the Minister to set up a regulation to allow ISPs charge a fee for performing the subsection 41.26(1) obligations. Until then, ISPs rather than copyright owners should bear the cost of assemble, verify and forward the identifying information pursuant to the Copyright Act and the Copyright Modernization Act.

 

For more information please contact:

 
Scott Miller, Partner, Head of the Litigation Department
T: 613.801.1099

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Yang Wang, Ph.D., Summer Law Student
T: 613.801.1082

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[1] Copyright Act, R.S.C. 1985, c. C-42, ss. 41.25-27 (added by the Copyright Modernization Act, S.C. 2012, c. 20, s. 47).

[2] Voltage Pictures LLC v John Doe, 2017 FCA 97 at para 27.

[3] Ibid at para 40.

[4] Ibid at para 61.

[5] Ibid at para 52.

[6] Ibid at para 76.

 

A balance between confidentiality orders and the open court principle in patent litigation

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By Randy Marusyk and Yang Wang, May 23rd, 2017

Canadian courts have recently revisited the issue as to whether a confidentiality order in pharmaceutical patent litigation should be granted notwithstanding the open court principle to ensure the public access to court proceedings.

In Teva Canada Ltd. v Janssen Inc., 2017 FC 437, an action was brought by Teva to recover damages from Janssen pursuant to section 8 of the Patented Medicine Regulations. A confidentiality order was originally issued by the Federal Court, allowing both parties to file materials under seal but only for the purpose of motions to compel[1]. However, both parties had misused the confidentiality order to improperly file materials under seal, which is common in pharmaceutical patent litigation. After the Court issued a direction requiring the parties to explain, Teva made a motion to allow the (1) supply contract between Teva and its supplier, and (2) excerpts of Teva’s ANDS (Abbreviated New Drug Submission) to remain under seal. This motion is relying on affidavits submitted by Teva that the Court eventually deemed as incomplete, insufficient, and misleading.[2] Teva claimed that: (1) ANDS filing are treated confidentially by Health Canada; (2) its competitors could obtain an unfair competitive advantage by accessing to the information.

Teva’s motion to maintain the confidentiality of the materials is dismissed. The Registry of the Federal Court should unseal and place on the public record the majority of the parties’ materials except a small portion.

Confidentiality orders inherently comprise the open court principle, and thus should be granted cautiously. A court has to be satisfied that the confidentiality order is necessary to prevent a serious risk of harm to an important interest. The moving party has the onus to establish that the information is actually confidential, rather than bold assertions and subjective belief. [3]

The Court found that the proposed confidential information regarding Teva’s supply chain is on the financial aspect of the agreement, and not on the identity of the supplier.[4] Therefore, the name and location of the supplier should be disclosed. To answer Teva’s first claim, the Court held that “while a pharmaceutical company may assert that the information contained in its ANDS as to the composition and method of manufacture of its products is treated as confidential, this information may lose its confidentiality once the product is publicly sold.”[5] The Court also recognized the fact that regulatory regime in Europe is different from the Canadian regime. Some of the information as to a pharmaceutical product’s supplier is public disclosed in Europe but not required to disclose in Canada. The fact that Teva manufactured and marketed its product in multiple European countries and already disclosed certain information contradicts with its affidavit that “is not merely that the precise identify of the manufacturer if the API that goes into Canadian is not public known, but, sweepingly, that the Teva global group of companies keeps information related to the location or identity of entities that supply their products confidential.” [6]

For Teva’s second claim, the Court found it was speculative and Teva failed to show it would actually suffer serious harm if the identity of its supplier were to be disclosed publicly.[7]

In patent litigation, Canadian courts are inclined to uphold the open court principle to ensure the public access to court proceedings. Unless the moving party for a confidentiality order can establish that it is necessary to prevent a serious risk of harm rather than bold assertions and subjective belief.

For more information please contact:

 
Randy Marusyk, Partner

T: 613.801.1088

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Yang Wang, Ph.D., Summer Law Student

T: 613.801.1082


[1] Teva Canada Ltd. v Janssen Inc., 2017 FC 437 at para 8.

[2] Ibid at para 32.

[3] Ibid at para 6.

[4] Ibid at para 16.

[5] Ibid at para 36.

[6] Ibid at para 28.

[7] Ibid at para 29.

 

A Ticket to Success: Ontario Launches its Scale-Up Vouchers Program for Innovative Technology Companies

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By Stephanie White and Yang Wang, May 9th, 2017

Last November, the province of Ontario committed to help small businesses become more globally competitive. In doing so, the Ontario government promised a Scale-Up Vouchers program that would provide high potential SME’s (small and medium-sized enterprises) with access to additional resources to support critical business activities. Ontario has now made good on that promise.

On April 28, 2017, Ontario’s Ministry of Research, Innovation & Science (MRIS) and Ministry of Economic Development and Growth (MEDG) launched the Ontario Scale-Up Vouchers Program, a four-year, $32.4 million initiative. Details of the program can be found at http://www.ontarioscaleupprogram.ca/.

The program is intended to foster the growth of SMEs in Ontario to become sustainable Canadian companies. Although Canada generates world class research, and there are many start-ups based on this research, we continue to lag behind other industrialized nations in successful technology commercialization. Canada spends a lot of public money on R&D, however, to date, resources directed at supporting commercialization of the resulting innovative technologies have been largely ineffective.

In order to address this shortfall, while at the same time maximizing the likelihood of meaningful return on investment, the Ontario government has decided to target the Scale-Up Vouchers program to a subset of Ontario SMEs identified as “high-growth”. More specifically, the program is directed to companies in the high value fields of Information and Communications Technology, Advanced Materials and Manufacturing, Clean Technology, and Life Sciences. In order to be considered “high growth”, and consequently eligible to apply to the program, a company must:

  • have an annual revenue of between $1 and 50 million; and
  • should already be experiencing a 20% annual growth rate in revenue, sales or employment over the most recent fiscal year; and/or
  • have secured private investment of at least $2 million in the previous two years

The program will be delivered by three Ontario Regional Innovation Centres; MaRS, Invest Ottawa and Communitech. Each application will be reviewed and scored by a selection committee to identify those companies considered to have a high potential for exponential growth in Canada and globally.

Companies successful in the application process will be provided access to growth coaches, who are senior executives and professionals with proven expertise in talent management, sales and revenue growth, IP protection and innovation, and/or financing. Successful applicants will also be eligible to work with their coaches to apply for a voucher to offset eligible expenses for supporting growth by:

  • increasing sales
  • securing and nurturing talent
  • developing and protecting intellectual property and/or
  • accessing capital

Voucher values correlate to the size of company revenue, as follows:

  • $150,000 voucher value – for companies with revenues between $1 million and $5 million (with an expectation for the company to match 33% of the voucher value)
  • Up to $250,000 voucher value – for companies with revenues over $5 million (with an expectation for the company to match 50% of the voucher value)

It is important to highlight the value of this program in championing Ontario’s innovative technology companies and, importantly, in recognizing the value of encouraging intellectual property protection of Canadian technologies. Strong intellectual property protection is inextricably linked to access to capital and ongoing commercial success, particularly for early stage companies. We are hopeful that similar programs will become available for pre-revenue, start-up companies with valuable technologies, so that we will continue to see fresh cohorts of applicants over the four year lifetime of this Scale-Up Vouchers Program.


For more information please contact:

Stephanie White, Partner

T: 613.801.1067

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Yang Wang, Summer Law Student

T: 613.801.1082

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Innovative Medicines in Canada: Important Patent Questions to Ask

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By Kay Palmer and Claire Palmer, May 2nd, 2017

THE INTERPLAY OF DATA PROTECTION, PATENT REGISTER & PMPRB IN PATENT PROSECUTION & MAINTENANCE DECISIONS IN CANADA

Patents directed to medicines, and in particular, innovative drugs are impacted by a number of legislative regimes in Canada. The impact of these regimes should be fully considered when decisions are made with respect to obtaining and maintaining patent rights in Canada.

A number of key questions need to be fully considered prior to obtaining or maintaining patent protection relating to innovative drugs in Canada are discussed below. These questions relate to the Canadian patent regime, data protection provided under Canada’s Food and Drug Regulations, Canada’s Patented Medicines Notice of Compliance Regulations and the Health Canada’s Patent Register and the Patented Medicines Price Review Board. Only after answering the questions below should decisions regarding Canadian patent rights covering medicines be made.

FIRST QUESTION: Does the drug in question fall under the definition of an “innovative drug”?

Under the Food and Drug Regulations, an innovative drug is "a drug that contains a medicinal ingredient not previously approved in a drug by the Minister and that is not a variation of a previously approved medicinal ingredient such as a salt, ester, enantiomer, or polymorph". Innovative drugs are provided eight years of data protection from the issuance of the first drug approval (i.e. Notice of Compliance issued by the Minister of Health) with a pediatric extension for qualifying drugs. This data protection prevents a subsequent manufacturer from relying upon the data in the innovator’s drug submission for the first six years of the eight-year period.

If the answer to the first question is yes, the following question should be answered:

When would data protection for the innovative drug expire? i.e. Does the data protection outlast any patent protection for the drug?

SECOND QUESTION: What are all of the Canadian patents and applications (including PCT applications anticipated to enter Canada) that relate to the innovative drug and how do they relate?

For example, do the claims of the patents or applications directly cover the drug or linked to the drug by the merest slenderest thread.

THIRD QUESTION: When would each of these patents or patents resulting from these applications expire? i.e. Do the patents expire before or after the anticipated end of data protection?

FOURTH QUESTION: Does the patent term end before or after the term of data protection?

As patent applications related to innovative drugs are often filed well before drug approval, the effective patent term can be significantly reduced – some studies suggest that the post-Health Canada approval patent term is ten years or less in Canada. Accordingly, for some innovative drugs the patent term ends prior to data protection.

If the answer is no, the following question should be answered:

Does the patent whose term ends after the end of the term of data protection impact a competitor from entering the Canadian market either in terms of the Patent Register (see below) or Infringement proceedings?

FIFTH QUESTION: Is the patent eligible for listing on Health Canada’s Patent Register?

The PM (NOC) Regulations allow innovative drug manufacturers that have patents listed on Health Canada’s Patent Register to seek an order prohibiting the Minister of Health from issuing a Notice of Compliance (the regulatory safety approval issued by Health Canada) to a second-entry wishing to rely on the innovator’s drug product for regulatory approval, until after the expiration of the patents in question. 

Not all patents that relate to a drug are eligible for listing on Health Canada’s Patent Register. There are specific requirements to list a drug. Accordingly, it is important to determine if each patent related to the drug is eligible for listing on the Health Canada Patent Register.

 SIXTH QUESTION: Does the PMPRB have jurisdiction?

The PMPRB regulates the “factory gate” price for all patented drug products in Canada including those sold by Special Access Programs. The PMPRB does not have jurisdiction if there are no issued patents or the patents have expired. The PMPRB has jurisdictions if the patent has a nexus to the drug by the merest slenderest thread. This is in contrast to Patent Register listing eligibility requirements.

If PMPRB does have jurisdiction, the price at which the drug can be sold will be impacted.

CONCLUDING COMMENTS:

The above questions are simply a sampling of the questions which must be answered when determining the best strategy to protect your innovative drug. Other considerations include for example whether the drug is a biologic. Given the complexity, it is critical to obtain the advice of Canadian council.

 

For more information please contact:

Kay Palmer, Senior Patent Agent

T: 613.801.0452

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Claire Palmer, Senior Patent Agent

T: 613.801.0450

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In for a penny, in for a pound…

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By Stephanie White, April 18th, 2017

I hear it all the time … “I can’t afford to protect my intellectual property.” Let me tell you that the reverse is true for a startup … you can’t afford NOT to protect your intellectual property! If you’ve decided to take the leap and embark on a start-up adventure, then you will want to do everything in your power to succeed.

Early stage companies are typically built on a great idea and a lot of hope. These companies have not yet had the opportunity to acquire tangible assets or to build significant sales revenue (if any!). Consequently, the value in these companies is often in their ideas and their ability to create products/services from those ideas. Potential investors and partners won’t take a second look at a company if those ideas are not protected, or protectable. The assumption is that all new companies have a great idea, however, investors and partners alike need to know that they will have a defensible competitive advantage over other companies before they join in developing and growing such early stage endeavors. It’s all about mitigating risk.

Market exclusivity typically requires strong intellectual property protection. But what does that mean for a start-up, with limited resources and a nascent technology? I have identified below four general areas of focus for valuable IP protection that are important to early stage companies.

Avoid costly complications:

  • Know the competitors’ IP so you know where or what the company has freedom to practice without risk of infringement;
  • Ensure that employees and contractors assign their IP rights to the company upfront;
  • Scrutinize all third party agreements, including so-called “standard” agreements (e.g., confidentiality agreements), to ensure that they do not restrict or damage the company’s IP rights
  • Teach employees about IP

Be proactive:

  • Create a working environment that fosters innovation
  • Identify inventions early and keep quiet until they are protected
  • Reassess IP regularly to ensure it remains consistent with the company’s commercial and business plans

Use appropriate IP protection:

  • Don’t rely solely on patents: consider trade secret protection and remember the value of brand protection through trademarks
  • With respect to patents, invest in quality applications rather than a lot of applications
  • Invest in IP protection in as many jurisdictions of commercial relevance as possible, while also considering strength of protection available in each jurisdiction

Look for opportunities to fund IP:

  • Government grants for startups that support IP expenditures
  • Monetize company IP (e.g., in non-commercial fields of use, or jurisdictions; or IP that has become irrelevant)

Finally, talk to your intellectual property advisor! For early stage companies in particular, it can be beneficial to select an advisor who can act as a virtual in-house professional, with a good understanding of the company’s business goals. This provides both the company and the IP advisor the opportunity to proactively and strategically grow the value of the company’s IP portfolio.

Ultimately, because of their limited resources, early stage companies may need to be even more tactical than large corporations in how they handle their IP. However, investing the time and money to ensure that the company’s IP is properly protected will pay dividends in the long run!

For more information please contact:

Stephanie White, Partner

T: 613.801.1067

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Government Funds to Good Use: Helping Small Businesses with First-Time Patent Costs

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By Randy Marusyk and Deborah Meltzer, April 3rd, 2017

The Quebec government pioneered its “First Patent Program”, which was launched in July 2015, in order to encourage small to mid-size businesses to protect their intellectual property. Under this program, certain businesses will be eligible to have the provincial government subsidize part of the incurred expense from acquiring their first patent. This initiative is extremely promising, particularly in supporting the growth of young corporations. In fact, a US study conducted by the Office of Chief Economist of the USPTO demonstrated a positive economic impact on startup companies that were given an allowance for their first patent. The results included a 52% increase in sales and a 36% increase in employment.

Other provinces have followed; the Government of Ontario intends to finance their new Scale-Up Voucher Program to facilitate the growth of high-impact companies. Notably, one of the possible uses of these vouchers is to fund protection of intellectual property. British Columbia offers an International Business Activity tax refund for International Patent Businesses, but has yet to implement a supporting program that effectively targets first-time corporate patentees.

The Intellectual Property Institute of Canada encouraged the federal government to fund a program similar to that of Quebec. In fact, this was one of the recommendations made in the December 2016 Report of the Standing Committee on Finance. Hopefully small and medium-sized businesses all over Canada will soon be able to benefit from federal intellectual property protection services for first time patentees.

 

For more information please contact:

 
Randy Marusyk, Partner

T: 613.801.1088

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Deborah Meltzer

T: 613.801.1077

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CASL Warning! Private right of action is coming

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By Randy Marusyk and Lauren Blaiwais, March 27th, 2017

In 2014, Canada adopted an anti-spam law based on the opt-in model. Enforcement was predominantly the responsibility of the Canadian Radio-Television and Telecommunications Commission; along with the Competition Bureau and Privacy Commissioner. However, as of July 1st, 2017, Canada’s Anti-Spam Legislation* (CASL) will enable a private right of action. This means that individuals and organizations that are affected by a violation of sections 6-9 of CASL will have access to commencing an action before the courts. Additionally, claims may be brought for violations of section 74.011 of the Competition Act (false or misleading electronic messages) and sections 7.1(2) and (3) of PIPEDA (e-mail harvesting).

Sections 6 to 9 of CASL stipulate the restrictions for the emission of commercial electronic messages (CEMs). Unsolicited CEMs are prohibited unless the person to whom the message is sent has consented to receive it – consent may be express or implied. The message must comply with the prescribed requirements and must identify who sent the message; provide contact information to readily contact the person who sent the message, and include an unsubscribe mechanism.

The maximum statutory damages that the court may order for a contravention of s.6: $200 for each violation, up to $1 million/day; for ss. 7 and 8: $1 million/day that a contravention occurred; s.9: $1 million/contravention. As such, this is a call to businesses to ensure that your current consents, unsubscribe methods, electronic communication practices and marketing strategies are in order.

CASL Infograph3 ENG

taken from: http://www.crtc.gc.ca/eng/internet/infograph.htm

 

For more information please contact:

 
Randy Marusyk, Partner

T: 613.801.1088

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Lauren Blaiwais, Articling Student

T: 613.801.1057

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* An Act to promote the efficiency and adaptability of the Canadian economy by regulating certain activities that dis courage reliance on electronic means of carrying out commercial activities, and to amend the Canadian Radio-television and Telecommunications Commission Act, the Competition Act, the Personal Information Protection and Electronic Documents Act and the Telecommunications Act, SC 2010, c 23.



Learning the Game – A Patent Process and Timeline

Hockey

By David Lotimer, March 7th, 2017

Applying for and obtaining a Canadian patent is somewhat like learning how to play hockey - it can be a complicated process. Just as it takes years to understand the mechanics of the ice, it may take months to construct a patent draft that properly captures the inventive aspects of your invention. The extensive rules of hockey must be learned, just as there are several procedural formalities that must be followed during the patent filing stage. Finally choosing the right stick may be likened to the practical considerations necessary for an inventor, such as public disclosures, patent search reports, and jurisdictional differences.

Don’t let these complications overwhelm you - many people have learned how to play hockey, and you can learn how to file a patent.

There are three basic steps to filing a patent in Canada: (i) Drafting; (ii) Filing; and (iii) Prosecution.

(i)               Drafting (4 – 16 weeks to complete) –

Drafting a patent may take days, months, or even years to complete. This timeline is highly dependent upon the complexity of the technology and the scope of the protection sought. It is usually an iterative process between the inventor and a patent agent during which several drafts and materials related to the invention are exchanged.

At the end of the process you will be left with a document containing a Background (address the current state of technology and problems to be solved); a Description (a full enabling disclosure, outlining the “best mode” of the invention); Claims (set the bounds of the legal monopoly, essentially outline the fence of what others are restricted from doing); Figures (drawings or graphs or visual aids to help explain the invention); and an Abstract (brief technical description of the invention).

(ii)              Filing (1 day - 1 week) –

After the patent has been drafted, the document must be filed with the Canadian Intellectual Property Office (CIPO). This will involve the submission of administrative information about the inventor or agent (details such as name, address, etc.). Certain government fees must also be paid to CIPO at the time of filing.

Once the application has been submitted, CIPO will process the application and send confirmation of receipt. Upon an examination request, CIPO will commence an extensive examination of the patent to determine if the patent should be granted.

(iii)             Prosecution (12-16 months) –

During the prosecution step, an examiner will decide if your patent application meets the patent requirements under law. For example, he or she will judge if your invention is new, useful and inventive, and whether or not your patent is similar to other patents and technical documents.

The examiner will write and issue a report about their findings, which will include any changes they want you to make within the patent. The report will also contain a response timeframe. Only once you obtain a final approval from the examiner at CIPO will a patent be issued.

As an inventor there are other practical considerations that should be at the forefront of your mind. First of all do NOT publically disclose any inventive concepts related to your invention without safeguards in place. Public disclosure may significantly alter the patent rights you are able to obtain. Non-disclosure agreements can be a good tool to avoid such a disclosure.

Also, you may want to undertake a prior art search to make sure that your inventive idea does not already exist. There are public resources available for searching such as the CIPO Patent Database and Google Patents.

Finally, patent protection is territorial; therefore, an issued patent is only valid throughout the country in which it is issued. If you wish to patent an invention in another country, you may apply separately in each country or through certain regional convention offices, established under international treaties or conventions.

For more information please contact:

David Lotimer, Associate

T: 613.801.1063

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The Benefits of Registering a Patent in Canada

patent

By David Lotimer, February 22nd, 2017

Although we may not realize it, each day every one of us interacts with patented inventions. Our phones, cars, and computers contain hundreds of patented components. Even your favourite tent or sleeping bags have been protected by patents.

There are many benefits to registering a patent in Canada, and it is in your best interest to know these benefits.

A patent is an exclusive right of making, constructing and using an invention and selling it to others. In exchange for full disclosure on how to use the invention (the patent), the Canadian government allows a patent owner exclusive use of the invention for 20 years. The theory behind granting this limited term monopoly is that it provides the incentive for innovation.

This means a patent holder has 20 years of exclusive use of the invention they patent. For example, if you create and patent a new form of transportation, you will have exclusive rights to use that transportation in the way you so choose for the next 20 years.

This exclusive right to use may be very valuable. You will be able to sell these rights, license the rights or use them as assets to attract funding from investors. The exclusive right also prevents anyone else from from copying, manufacturing, selling or importing your invention without your permission. You are able to prevent other competitors from entering into the market.

Perhaps next time you hop on a chairlift, your mind will turn to the patent protecting the technology that gets you to the top of your favourite ski hill. It is that protection that allowed the chairlift inventor to design, manufacture and sell their invention without fear that they would be put out of business by someone copying their idea.

For more information please contact:

David Lotimer, Associate

T: 613.801.1063

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Buyers of Keywords Beware! Content of Ads May Spell Confusion

Dollarphotoclub 86927923-300x200.jpg

By Jonathan Roch and Lauren Blaiwais, February 8th, 2017

In the British Columbia Supreme Court (“BCSC”) decision of Vancouver Community College v Vancouver Career College (Burnaby) Inc, 2015 BCSC 1470, the Vancouver Community College  alleged that the Vancouver Career College was wrongfully using and passing off its mark, VCC, in both its domain name and keyword advertising. The BCSC ruled that purchasing keywords of a competitor’s trademark is not sufficient to establish passing off and that the relevant time to assess a likelihood of confusion in passing off assessments is once a consumer reaches a website, and not when a consumer reviews search engine results.  

However, on January 26, 2017, the British Columbia Court of Appeal (“BCCA”) overturned the BCSC’s decision (2017 BCCA 41) holding that the claim of passing off had been established. The court found it is a consumer’s “first impression” that is relevant and therefore confusion occurs when a customer reviews search engine results. The BCCA did go on to affirm that purchasing a competitor’s trademark as a keyword is not sufficient in and of itself to establish passing off.

Parties using competitors’ trademarks in keyword advertising will therefore need to be very vigilant with the message of their keyword ads to avoid passing off.

For more information please contact:

Jonathan Roch, Partner

T: 613.801.1059

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Lauren Blaiwais, Articling Student

T: 613.801.1057

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A Word of Caution: File Wrapper Contents Can Come Back to Haunt You

caution-tape

By Jessica R. Sudbury and Claire Palmer, February 6th, 2017

The Federal Court made a sweeping statement in Justice Locke’s decision released last Friday that submissions made to the Canadian Intellectual Property Office (CIPO) during patent prosecution can re-emerge to haunt litigants and hit them where it hurts: the wallet.

On January 27, 2017, the Federal Court released a new decision for the Pollard Banknote Limited v BABN Technologies Corp[1] matter. Pollard Banknote Ltd., the successful plaintiff from last summer’s patent impeachment trial, was awarded costs elevated by 50% above the usual rate for allowable counsel fees and disbursements under the Federal Courts Rules.[2] Several issues concerning conduct of the defence throughout trial grounded the elevated costs award in the judgment,[3] and Justice Locke specifically denounced the fact that the defendant reversed the previous stance taken on claims construction during prosecution of the patent at issue. Justice Locke noted that “based on jurisprudence that is clearly binding on me, I ignored the position that SG took during prosecution. Instead, I adopted the claim construction position that SG argued at trial. But I observed that it was “breathtaking” to see SG take this position on claim construction without addressing the fact that it reintroduced the problem of obviousness that it had overcome during prosecution by asserting the contrary claim construction position.”[4]

Therefore, patent litigants be forewarned: this latest decision, in combination with the reasons penned by Justice Locke following last summer’s patent impeachment trial, makes it clear that file wrapper contents are not laid to rest in Canada once a patent application goes to grant. This point was also highlighted in last summer’s Federal Court judgment that, in one fell swoop, invalidated the patent at issue and breathed new life into the long-dead issue of patent file wrapper estoppel doctrine applicability in Canada.

The doctrine of patent prosecution history estoppel (commonly known as “file wrapper estoppel”) is in full force in the U.S., where it enables courts engaging in claims construction to consider representations made by inventors to the Patent Office during the patent prosecution process. Because inventors before U.S. courts can become “tied” to previous assertions made to the Patent Office concerning the scope of the monopoly claimed, some argue that operation of the doctrine helps conserve valuable resources by abridging or avoiding drawn-out patent disputes and forcing inventors to carry out more due diligence checks prior to commencing proceedings.

Unlike its U.S. counterpart, the Supreme Court of Canada (SCC) has historically held that representations made during the patent prosecution process constitute extrinsic and inadmissible evidence for claims construction during patent litigation.[5] Judges here are thus expected to interpret claims through a purposive construction lens that ignores all statements from the inventor contained within the patent file wrapper that might otherwise help resolve a drafting ambiguity. The Federal Court’s pronouncements on the Pollard v Babn matter make it clear, however, that inventors and IP practitioners are no longer completely unconstrained to make whatever admissions are necessary to overcome objections by CIPO examiners.

In Justice Locke’s July 28, 2016 reasons, he openly beckoned for a reconsideration of the SCC’s position on the file wrapper estoppel doctrine, noting that “prosecution histories in many jurisdictions (including Canada) are now available on the internet. This raises the question whether it is time to revisit the rule against using extrinsic evidence in claim construction.”[6] In other words, once these documents are placed into the public domain, why then restrict reliance on their contents?

The Court in the Pollard v Babn matter was confronted with a difficult situation because i) the application prosecution history was admitted on grounds other than for the purpose of construing the patent claims, and ii) these documents revealed that the inventor had taken a completely opposite position toward the meaning of a claim as worded during the prosecution process. Justice Locke repeatedly stated that the prosecution history evidence did not bear on his finding that the impugned claim was invalid for obviousness. However, in obiter, Justice Locke noted that “it is breathtaking to see SG now attempt not just to take a different position on the construction of claim 1, but also to argue that, by doing so, it does not reintroduce the problem of obviousness in light of the Camarato Application that it had previously argued was avoided applying its first position.”[7]

Counsel for the Defendants filed a Notice of Appeal at the Federal Court on September 29, 2016 against Justice Locke’s July 28, 2016 decision.

In the wake of the Pollard v Babn matter and pending determination on any related appeals, inventors and IP practitioners would be well-advised to adjust their practices accordingly, bearing the following points in mind:

i) File wrapper estoppel doctrine may yet become revived in Canada. The outcome of appeals related to the Pollard v Babn matter should be carefully monitored.

ii) Even if prosecution history evidence remains buried under Canadian patent law for claim construction purposes, all litigants remain vulnerable to the fact that cases are heard by human beings. Presiding judges nevertheless can become privy to file wrapper contents if admitted for a different stated purpose,[8] and the hearing of such evidence can bear an influence on all determinations made for the same matter.

iii) Litigants are well-advised to meticulously review file wrapper contents prior to commencing proceedings, or risk facing elevated costs awards on the basis of flip-flopped arguments.

For more information please contact:

Jessica R. Sudbury, Articling Student

T: 613.801.0762

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Claire Palmer, Senior Patent Agent

T: 613.801.0450

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[1]Pollard Banknote Limited v BABN Technologies Corp, 2016 FC 1193 (Pollard v Babn 2).

[2]Federal Courts Rules, SOR/98-106 at RR 400 & 407.

[3]Pollard v Babn 2 at para 36.

[4]Pollard v Babn 2 at para 31.

[5] See, for example, Free World Trust v Électro Santé Inc, 2000 SCC 66 at para 66.

[6]Pollard v Babn 1 at para 80.

[7]Pollard v Babn 1 at para 237.

[8] For example, where a party is compelled to produce file wrapper documents during an examination for discovery (e.g., Foseco Trading v Canadian Ferro Hot Metal, 1991 FCJ 421), or to establish an essential element of an impugned patent (e.g., Distrimedic Inc v Dispill Inc, 2013 FC 1043).

A Lesson in Costs: Know your Patent Claims before Asserting Infringement

Costs-rising-3653893 l


By Scott Miller and Deborah Meltzer, January 24th, 2017

MediaTube Corp v Bell Canada, 2017 FC 16 appears to provide a promising Canadian judgement that clarifies the assessment of the validity and infringement of an information technology patent with respect to the telecommunications industry. Unfortunately, the underlying thrust of the litigation quickly departed from claims of validity and infringement to a dispute over costs. The primary issue was that initially the plaintiffs’ did not have a clear claim of infringement, for which they were justifiably penalized with significant costs. In addition, it was concluded that despite their “477 patent” being valid, there was no infringement, and thus no costs were awarded against Bell.

Whether or not this case marks a victory for IT companies warding off so-called “patent-trolls”, is questionable. Canadian jurisprudence is calling for a foundational IT patent case; however, given the weaknesses in the plaintiffs’ infringement allegations, this judgement falls short of the mark of providing any real direction to patent owners with specific arguable claims. At best, it serves as a stepping stone to future patent infringement actions that will effectively guide both patentees as well as mega IT corporations.

For more information please contact:

 
Scott Miller, Partner, Head of the Litigation Department

T: 613.801.1099

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Deborah Meltzer

T: 613.801.1077

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How does CETA affect IP rights in Canada?

world-flags-e1382033853598


By Randy Marusyk and Lauren Blaiwais, January 10th, 2017

Canada and the European Union (EU) officially signed the Comprehensive Economic and Trade Agreement (CETA) on October 30, 2016. The following day, Parliament introduced the first reading of Bill C-30, An Act to implement the Comprehensive Economic and Trade Agreement between Canada and the European Union and its Member States and to provide for certain other measures. CETA’s principal goal is to reduce the barriers of Canada-EU trade; it addresses tariffs, product standards, professional certification, government procurement and investments.

In order to implement CETA, Canada is required to make changes to several federal acts, including the Patent Act and Trade-marks Act.

Trademarks

Bill C-30 modifies the definition of geographical indications (GIs) in the Trade-marks Act. It enables GI protection for not only wine and spirits, but also agricultural and food products, such as certain cheeses, oils and meats (e.g. feta). The Registrar will be responsible for supervising a list of protected GIs, and will restrict use of certain European GIs to products originating from the European regions that the GIs are typically associated with. Consequently, Bill C-30 allows for a GI opposition procedure for those interested in objecting to the protection of particular geographical indications. Any person interested may file a statement of objection within two months after the Minister makes a statement in respect of a GI published on the CIPO website and the Registrar enters same on the list.

Furthermore, there will be import/export restrictions for geographical indications: wines, spirits agricultural and food products will be banned if they bear the GI and either 1) do not originate in the territory indicated, or 2) do not conform to the laws of the territory indicated. Bill C-30 offers owners of protected GIs the option to file a Request for Assistance with the Canadian Border Services Agency to help prevent the import of counterfeit goods through the Intellectual Property Rights Program.

Patents

CETA will affect the term of pharmaceutical patent protection, as well as patent procedural rights. Pharmaceutical companies often face delays with patents in getting regulatory approval, which lead to lost patent protection due to the protracted development and approval process. The Patent Act does not currently moderate the lost patent protection due to delays; however Bill C-30 will offer a certificate of supplementary protection. This certificate provides patent term restoration for a maximum of two years.

In addition, CETA will provide an innovator right of appeal under the Patented Medicines (Notice of Compliance) Regulations (NOC Regulations). The NOC Regulations link patent protection and regulatory approval for pharmaceutical products. Linkage proceedings provide innovators with an avenue to prevent generic drug manufacturers from obtaining regulatory approval if same would result in patent infringement. Since CETA requires the effective right of appeal to linkage proceedings, the NOC Regulations will require modification, which will be enabled by Bill C-30’s amendments broadening the governor in council’s regulation-making powers.

An overhaul to the NOC Regulations proceedings would be possible with the expansion of regulation-making powers, which would have a significant impact on pharmaceutical patent litigation. For example, duplicate litigation, which stems from summary, non-binding determinations under the current NOC Regulations might see its last days if the NOC Regulations permit full actions and final determinations. This means that innovators will be able to access full appeals like those in regular patent actions.

For more information please contact:

 
Randy Marusyk, Partner

T: 613.801.1088

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Lauren Blaiwais, Articling Student

T: 613.801.1057

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In the Province of Québec Foreign-Language Outdoor Signage to Have "Sufficient Presence" of French

signage - small


By Scott Miller, November 22nd, 2016

The Government of Québec has now published the final version of the new Regulation respecting the language of commerce and business. Effective November 24, 2016, all new foreign-language outdoor signage must be accompanied by a “sufficient presence” of French, even when that outdoor signage contains a foreign-language trademark, which were previously exempt from the Québec language laws.

The new French component must be added alongside and in the same visual field as the foreign-language trademark and can take three different forms:

  1. a generic term or a description of the products or services concerned;
  2. a slogan; or
  3. any other term or indication, favouring the display of information pertaining to the products or services to the benefit of consumers or persons frequenting the site.

The requirement only relates to outdoor signage, and not indoor signage, movable products (e.g. automobiles), websites, etc. Businesses have a three-year grace period, to November 24, 2019, to bring existing signs into conformity with the regulations. A French guide entitled Affichage des marques de commerce published by the Office québecoise de la langue française provides examples and can be found here:

For more information please contact:

 
Scott Miller, Partner, Head of the Litigation Department

T: 613.801.1099

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From Filing to Registration: the Canadian Trademark Application Process

process-1


By Carrie Kerr, November 15th, 2016

Have you decided to register your trademark in Canada?

The application process at the Canadian Intellectual Property Office (“CIPO”) may seem somewhat complex, especially if it is your first time registering a trademark. It isn’t as simple as submitting an application, paying a fee and POOF! - as if by magic - you have a trademark registration. There are various requirements, stages, communications from CIPO and fees involved.

As an introduction to the process, here is what you can expect as your application moves its way through CIPO from the application stage to registration:


Filing

After your application is filed at CIPO it will be assigned a filing date and application number, provided that the application is complete. CIPO will also add your application to the Canadian Trademarks Database and issue you a formal filing acknowledgement and a proof sheet that summarizes the information in your application.

 

Examination

A trademark Examiner will then review your application. The application is reviewed for various formality requirements, including whether the description of goods and services are sufficiently specific.

The Examiner will also conduct a search of the Trademark Register to determine whether there are any prior applications or registrations that are confusing with your mark.

Lastly, the Examiner will determine whether your trademark is registrable in accordance with the Trade-marks Act. There are certain types of trademarks that are prohibited or are not registrable, including marks that are clearly descriptive or deceptively misdescriptive, are primarily merely the name of a person living or deceased within the past thirty years or are scandalous, obscene or immoral.

If there are any doubts about your application, the Examiner will issue an Examiner’s Report. You will have a chance to respond to the Examiner, and if the objections raised in the report are not overcome, the application will be rejected.

 

Advertisement

If the Examiner's objections are overcome, the trademark will be approved for advertisement in the Trade-Marks Journal, a weekly publication by CIPO which lists trademark applications being sought for registration.

The purpose of having your application published in the Trade-Marks Journal is to allow for members of the public to have an opportunity to oppose your proposed trademark.

This “opposition period” lasts for two months from the date of advertisement.

 

Opposition

If your application is opposed by a third party, we suggest contacting a registered trademark agent, who will be able to assist you in this complex process.

 

Allowance

If your application is not opposed, CIPO will issue a Notice of Allowance, inviting you to pay the Registration Fee.

If your application was filed based on “proposed use” in Canada, before the mark can register, you will need to submit a Declaration of Use, attesting to the fact that you have used your mark in Canada in association with the goods and services in the application. If you have not yet used your trademark in Canada by the time the Notice of Allowance issues, there are extensions of time available to pay the Registration Fee and submit the Declaration of Use which will give you additional time to begin using your trademark.

If your application was filed based on use or making known in Canada, you will only have to pay the registration fee.

Once the Registration Fee and Declaration of Use (if applicable) have been submitted and accepted by CIPO, your trademark application will register. CIPO will then issue an official Certificate of Registration.

 

If you have any questions about the Canadian trademark application process or would like further information please do not hesitate to contact us. We are always happy to help.    

 

Benefits of Registering a Trademark in Canada

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By Carrie Kerr, October 17th, 2016

Are you trying to decide whether to register your trademark in Canada?

Although the application process at the Canadian Intellectual Property Office (CIPO) can be unfamiliar and may be daunting, the time, money and effort you put in to formally register your mark is always worth it in the end.

Here are some of the reasons why you should consider it:

 

From Coast-to-Coast...

A Canadian Trademark Registration provides you with the exclusive right to use your trademark across Canada in association with the goods and services covered by your registration. Provided that you are actually using your trademark, registering it will protect you throughout Canada, even if your business only operates in a limited geographical area.

This benefit of trademark registration is unlike common law trademark rights. In Canada, as soon as you start using your trademark you begin acquiring what is called “common law” rights to your trademark. This means you are generally entitled to the exclusive use of your trademark in the geographical area in Canada where your mark has gained a reputation.    

By registering your trademark, you would enjoy this exclusive use across the entire country.


...South of the Border...

Owning a registered trademark in Canada can help you get a foot in the door in the United States, even if you have yet to enter the U.S. marketplace.

If you are currently using your trademark in Canada in association with the goods and services covered by your registration, you can rely on that use and registration as a basis for filing in the United States. Once allowed by the United States Patent and Trademark Office (USPTO), your U.S. application can then proceed to registration without having to submit any specimens of use to the USPTO. Without this corresponding Canadian Trademark Registration, you would need to submit evidence to the USPTO showing that you have begun using your mark in the United States before your application could register.

However, you will eventually need to start using your mark in the United States in order to keep your trademark rights in the U.S., specimens of use need to be filed five years after registration; otherwise, you may risk losing your registration.

 

...and Beyond

When you first file your trademark application in Canada, it sets off a timer of sorts.

Under the Paris Convention, an international intellectual property treaty, if you file a trademark application in Canada and within six months file an application in another member country, your foreign application can claim “priority” back to the earlier-filed Canadian application.

Essentially, the effective filing date in that foreign country will be the date you filed your application in Canada. This might give you an upper hand, in a case of a conflicting mark, as you can claim the earlier Canadian filing date for your registered rights to the trademark in a foreign country.

 

So Should You Register Your Trademark?

Registering a trademark in Canada is an investment. There is no doubt that the process takes time and money, however, you will find that it is a valuable asset, one that can help assert your rights in Canada, the United States and in other foreign countries.

If you have any questions about Canadian trademarks or are ready to start a trademark application, please do not hesitate to contact us. We are always happy to help.

 

Humanized Antibodies: CIPO Picks Up the Pace

Human DNA image2


By Claire Palmer and Jessica Sudbury, September 15th, 2016

Keeping pace with science and technology that evolves at lightning speed is a challenge for any government institution. The Canadian Intellectual Property Office (CIPO) has a lot of catching up to do, but is not out of the race just yet. Arcane patent office examination practices grounded in habit can never justifiably replace a proper fact-driven determination of patentability. Commissioner’s Decision 1398 (CD 1398, issued on May 5, 2016)[1] reminds us that CIPO is not completely asleep behind the wheel and shows that the applicant who fights to the bitter end can win it all.

At issue in CD 1398 were a set of dependent claims (5, 10, 15 and 20) in patent application 2,451,493 (published on January 3, 2003)[2] over a genus of humanized murine monoclonal antibodies directed against a human glypican-3 epitope. The epitope sequence was adequately disclosed; however the application did not disclose the corresponding complementarity determining regions (CDRs) for the humanized embodiments, nor any evidence that such humanized embodiments were actually made from the process described. In the Final Action issued by the Examiner on February 4, 2014, these dependent claims were found to be incompliant with section 84 of the Patent Rules for lack of support in the description, and that the specification was in violation of subsection 27(3) of the Patent Act for lack of adequate enablement.

The Examiner largely grounded rejection of these claims based on a previous decision issued by the Commissioner concerning humanized antibodies (CD 1296, Re: Sloan-Kettering Institute for Cancer Research),[3] finding that it created a bright-line rule requiring disclosure of CDR amino acid sequences to fulfill support requirements in the absence of evidence pointing to an actual carrying-out of the invention in the application. This, despite the fact that adequate support for generic monoclonal antibodies has generally been found upon disclosure of a fully characterized antigen capable of binding the antibody claimed (e.g., see the CD 1302 Immunex decision and MOPOP directive 17.08.01b).[4]

Since the CD 1296 Sloan-Kettering decision was issued in 2009, similar reasoning has been repeatedly applied to justify rejections of similarly-supported claims over humanized antibodies by CIPO examiners in disregard of submitted evidence. The Patent Appeal Board noticed this problem when it recommended an upholding of the dependent claims for the humanized genus of anti-glypican-3 antibodies to the Commissioner in CD 1398.

The Board identified several problems with the Examiner’s line of reasoning in the 2014 Final Action. First, it commented that no specific guidance concerning humanized antibodies existed at the time in Canadian jurisprudence (paragraph 23). Secondly, the Board noted that “the enablement requirement of paragraph 27(3)(b) of the Patent Act entails fact-specific determinations that take into account the common general knowledge (CGK) and the ordinary skills possessed by the person of ordinary skill in the art (POSITA) at the publication date of the patent application,” and that the relevant CGK had significantly evolved over the 11 years since (paragraph 35). Nonetheless, the evidence put before the Board was convincing to establish that antibody humanization techniques were “routine” in 2003 (paragraph 42). Thus, the relevant POSITA would have been adequately enabled to carry out the invention as described at the publication date (paragraph 44). Finally, the Board reasoned that the CD 1296 Sloan-Kettering decision “cannot impose a rigid rule” applicable to variable factual situations and that it had limited applicability to the present case (paragraph 39). Accordingly, the Board did not find that disclosure of the CDRs for humanized antibodies was a requirement to comply with the Patent Act.

While the institutional checks and balances on display in the CD 1398 decision may bring comfort to some, the decision may also serve as a reminder to others that baseless CIPO examination practices can present a serious obstacle to inventors seeking otherwise justified ownership rights over rapidly-developing technology. Pushing through these barriers with a well-supported patent application can clearly be worth the trouble and expense, however. Examiners should always bear in mind that the relevant CGK “undergoes continuous evolution and growth” (CD 1398, paragraph 36) and that only the CGK that was available to the relevant POSITA at the publication date can be considered in light of Patent Act requirements. An evidence-driven analysis of application claims in in light of the CGK at time of filing would catch a situation where the relevant POSITA had become practiced enough in brand-new technologies to not require inventiveness in carrying out an invention as described. Considerations, such as the current relevant CGK or previous Commissioner decisions analyzing similar patent applications, have no justifiable bearing on an examiner’s assessment of a patent application.

Thankfully, it appears that CIPO retains self-awareness and recognizes when it is stuck in a rut spinning its wheels. While consistency in examination practices may lead to increased certainty over time to the benefit of the public, our innovation institutions cannot carry out mandates without leaving room for flexibility and growth in internal procedures. Further, unlike courts, tribunals in Canada are not bound by stare decisis. Therefore, CIPO is not held to apply any body of rules except those found within case law, the Patent Act or the Patent Rules. Previous Commissioner’s Decisions are not determinative, and the public is entitled to decisions issued by CIPO that are assessed according to the relevant factual matrix in disregard of existing examination practices. Hopefully, the CD 1398 decision reflects a new lasting habit embarked on by CIPO to continually oversee and make internal adjustments to ensure it stands a fighting chance of keeping pace with our swift innovators.

 

For more information please contact:

 
Claire Palmer, Partner, Senior Patent Agent

T: 613.801.0450

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Jessica Sudbury, Articling Student

T: 613.801.0762

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Voltage Pictures Strikes Again: The Privacy Battle Between ISPs and Copyright Holders

music-piracy


By Scott Miller and Lauren Blaiwais, August 18th, 2016

The standards for when an Internet Service Provider (ISP) is required to deliver the names and addresses of individuals suspected of unauthorized downloading of copyright material to copyright holders was set down in the 2014 Federal Court of Canada decision of Voltage Pictures LLC v John Doe and Jane Doe [1] (in this case, the copyright materials were movies). In Voltage, the Court was conscious of both the need to safeguard an individual’s right to privacy, as well as the need to protect the rights of copyright holders (see here).

In July 2016, Voltage Pictures proposed a “reverse” class action alleging copyright infringement and claiming declaratory and injunctive relief against a Respondent whose identity is unknown. This is a unique approach to suing alleged file sharers en masse, a practice resembling that of ‘Copyright Trolls’ (a rights holder that enforces copyright it owns to profit from quick settlements and litigation). It is an opportunistic practice, which Courts generally frown upon.

Voltage, in requesting that the matter be certified as a “reverse” class action, moved to compel Rogers Communications Inc. to disclose “any and all contact and personal information of a Rogers customer associated with an Internet protocol address at the various times and dates” in order to determine who the representative defendant would be.[2] Voltage requested that it not be required to pay any fees and disbursements to Rogers for its compliance with the disclosure order.

Rogers, however, requested reasonable compensation for disclosing the information. Voltage argued that the “notice and notice” provisions of the Copyright Act bar Rogers from receiving any compensation and claimed that, even if Rogers were entitled to compensation, it should only be 50 cents per alleged infringer.

Sections 41.25 and 41.26 of the Copyright Act[3] create the “notice and notice” regime, which is a mechanism by which copyright owners may send a notice of claimed infringement through an ISP to an alleged infringer. Under these provisions, Rogers (the ISP) would be required to forward Voltage’s (the copyright owner) notice of alleged infringement to the Internet protocol address and “retain records to allow the [alleged infringer’s] identity to be determined for a specified time depending on whether the copyright owner has or has not commenced proceedings relating to the claimed infringement.”[4]

Rogers was compelled by the Court to disclose only the name and address of the alleged infringer and Voltage was ordered to pay Rogers $100 per hour, plus HST, for its time spent assembling the information for Voltage. The fee was mandated to be paid in full prior to the disclosure of the contact information. Rogers was also awarded its costs on the motion.

In order to protect the rights of copyright holders while preserving individuals’ privacy rights, the Court instituted certain safeguards. The information released by Rogers can only be used by Voltage in connection with the specific claims in the proceeding, and it must remain confidential and never be disclosed to any other parties or the general public, by making or issuing a statement to the media, until the identity of the alleged infringer becomes part of the public record.

Modern technology has opened up many different means of communication, but it cannot eradicate the personal property rights of individuals. Privacy concerns are important; however, they “must yield to public concerns for the protection of intellectual property rights in situations where infringement threatens to erode those rights.” [5]

 

For more information please contact:

 
Scott Miller, Partner, Head of the Litigation Department

T: 613.801.1099

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Lauren Blaiwais, Articling Student

T: 613.801.1057

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[1] 2014 FC 161 [Voltage 2014].

[2]Voltage Pictures, LLC et al v John Doe #1 et al, 2016 FC 881, at para 1 [Voltage Pictures 2016].

[3] Copyright Act, RSC 1985, c C-42.

[4] Voltage Pictures, supra note 2 at para 11.

[5] BMG Canada Inc v Doe, 2005 FCA 193.


Canada Just Became a More Attractive Jurisdiction to Litigate (2)

By Scott Miller, June 29th, 2015


On June 24, 2015, the Chief Justice of the Federal Court issued a practice notice outlining new procedures to streamline the time and cost of complex litigation, as outlined below:

  1. There will be a “short notice” wait list for earlier trial dates for those who wish to participate;
  2. Documentary discovery will be reduced and proportionate to the complexity of the action. A party will only be permitted up to 1 day of oral discovery per week of trial, or portion thereof, to a maximum of 4 days of oral discovery;
  3. No questions during discovery will be allowed to be taken under advisement. Questions can only be objected to with significant cost sanctions for unreasonable objections. Moreover, refusal motions will be permitted only until discoveries are completed and will be restricted to 1 hour per day of discovery;
  4. Technology primers may be provided before trial to expedite hearings; and
  5. All demonstrative evidence must be exchanged at least 60 days before trial;

Canada’s streamlined Federal Court procedural rules may be used as a tool to encourage both Canadian and global settlements. Likewise, if litigation is necessary, Canada’s Federal Court approach provides a speedy and cost effective forum to determine intellectual property rights.

For more information about this topic please contact:

Scott Miller, Partner, Head of the Litigation Department 
T: 613.801.1099
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Important milestone in the Canadian IP law - we finally have privilege!

By Randy Marusyk, July 12th, 2016


On June 24, 2016, an important milestone was achieved in the Canadian IP law due to the enforcement of section 16.1 of the Patent Act and section 51.13 of the Trademarks Act. Going forward, confidential communications between Canadian patent/trademark agents and their clients are protected under the statutory privilege in the same way as the communication between lawyers and clients is privileged. An agent cannot be required to disclose or give testimony on the communication in a civil, criminal or administrative action or proceeding.

The communication between patent/trademark agents and their clients will be privileged if the following requirements are met:

  • The communication is between clients (or the client’s behalf) and their registered patent agents, trademark agents, or the registered agents’ behalf.
  • The purpose of the communication is seeking or giving advice with respect to any matter relating to the protection of an invention or a trademark (including geographical indication or mark referred to as part of paragraph 9 of the Trademark Act).
  • The communication is intended to be confidential.

The client can expressly or implicitly waive the privilege between the agent and himself or herself, and the provisions protects the communications whether agents are lawyers or not. It is also worth noting that the privilege provisions also apply to the communications between clients and their agents who are registered as patent or trademark agents that are privileged under the law of another country and the three requirements above are met.

For more information about privilege provisions in Canada please contact:

Randy Marusyk, Co-managing Partner
T: 613.801.1088
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Leonardo Da Vinci Is Still Alive!

By Scott Miller, February 9th, 2016

leonardo-vitruvian-man-b

Federal Court File Nos. T-1104-15 and T-2125-15

Scott Miller and the litigation team at MBM Intellectual Property Law have successfully joined its Italian wine making client, Dallevigne S.p.A. (Dallevigne), to an appeal of a decision of the Canadian Trademark Office expunging the trademark DA VINCI (TMA303667) for non-use pursuant to s.45 of the Trademarks Act. The party who originally requested the s.45 confirmed it will not participate in the appeal of the trademark office decision to the Federal Court. However, the maintenance of the s.45 decision is relevant to Dallevigne because it had filed a trademark application, CANTINE LEONARDO DA VINCI & Design No. 1561950 (CANTINE) which was refused by the Trademark Opposition Board (TMOB) solely because, at the time of the TMOB decision, the DA VINCI mark was still on the register. Dallevigne has appealed the TMOB decision refusing the registration of the CANTINE trademark.   

The Federal Court correctly found that Dallevigne (1) will be directly affected by the s.45 appeal decision and (2) will suffer prejudice if it was not allowed to be joined to the s.45 appeal because Constellation Brands Quebec Inc., the owner of the DA VINCI registration is continuing to assert the impugned trademark against the CANTINE trademark, without the opportunity for Dallevigne, or any other party,  to challenge the registration being asserted against Dallevigne.  

The Federal Court also correctly stayed the appeal of the CANTINE trademark pending the outcome of the s.45 appeal recognizing that proving irreparable harm is not a pre-condition to the granting of a stay where the Federal Court is effectually enjoining itself as opposed to exercising power over an administrative body. In such situations, a stay will be granted if the Court believes a party will not be unfairly prejudiced and it’s in the interest of justice to treat the request for a stay analogous to a scheduling or an adjournment request.  

In all, it is possible to have a party joined in one proceeding and at the same time stay another proceeding when fairness, common sense and the interest of justice are considered.


For more information about this topic please contact:

Scott Miller, Partner, Head of the Litigation Department 
T: 613.801.1099
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Trademarks in Canada and the Madrid Protocol

By Randy Marusyk, April 30th, 2015

The Madrid Protocol is a trademark treaty that has established a system for the international registration of trademarks, having 92 member countries including the United States and the European Union. It makes it possible to file national trademark applications in one language, and also to simultaneously renew and record assignments or address changes for registrations in multiple jurisdictions. This filing procedure may potentially provide significant cost savings for an applicant who would like to file a global trademark.

Canada has begun implementation of the Madrid Protocol when Bill C-31, the Economic Action Plan 2014, No. 1, which recently received Royal Assent. Although this legislation has been passed, the Trade-mark Regulations will need to be revised and proclaimed into force before the Madrid Protocol becomes law in Canada; it is expected this will happen in late 2015 or early 2016. Other practical implementations such as staff training, IT system updates, and clarification of the Canadian Intellectual Property Office’s (CIPO) role as an ‘Office of Origin’ may affect this timing.

There have been some concerns expressed as to the implementation of the Madrid Protocol in Canada. Practically, it will further burden an over-burdened system which may result in an increase of the prosecution timeline for domestic applications, in order to meet the strict time limits imposed by the protocol. The Courts may also need to adjust to higher volumes of litigation while looking for legal guidance in other jurisdictions. There are also concerns about the overly broad legislative amendments including the removal of trademark ‘use’ requirements at the time of registration. Such a change in the Canadian legislation may result in trademark squatting, that is, the registering of trademarks solely for the purpose of selling them.

For more information about this topic please contact:

Randy Marusyk, Partner 
T: 613.801.1088
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Federal Court of Appeal Confirms Use of Pop Culture to Demonstrate Fame of a Mark

TEQUILA CUERVO, S.A DE C.V. v. EMPRESSA CUBANA DEL TABACO, TRADING ALSO AS CUBATABACO AND CORPORATION HABANOS S.A., 2015 FCA 15

pop-culture

By Jonathan Roch, January 23rd, 2015

On January 21, 2015, the Federal Court of Appeal affirmed the Federal Court's decision of October 4, 2013 which refused Tequila Cuervo’s application for the mark LAZARO COHIBA in association with rum.

Federal Court

The Federal Court refused the trademark application for LAZARO COHIBA in association with the proposed use of rum on the basis that it was confusing with the registered COHIBA marks used in association with cigars and tobacco.  

MBM was able to demonstrate that the COHIBA trademarks are widely known across Canada by relying upon references in widely distributed films (Hotel Rwanda, Bad Boys II and Into the Blue), television shows (Sex in the City and The Simpsons), music (including Jay-Z, Lil Wayne, P. Diddy and Busta Rhymes) and magazines (Cigar Aficionado). 

Expert evidence was adduced to explain that the COHIBA references described above were more than the average product placement.  Rather, the COHIBA references were a means of borrowing the credibility of the brand as a symbol of status, wealth, power, intrigue, luxury and mystery and of reflecting those qualities upon the characters of the pop culture references. Expert evidence also established that smokers are more likely consumers of alcohol products and that in the minds of smokers these products are linked.  Finally, additional evidence further demonstrated an overlap in the alcohol and tobacco/cigar trades (LCBO and SAQ agency stores).

Federal Court of Appeal

In its appeal, Tequila Cuervo asserted, amongst other arguments, that the Federal Court’s determination that the COHIBA marks are iconic and/or famous ignored the Supreme Court principles for dealing with famous marks, adopted a new test to determine fame, and fundamentally changed the test for assessing a likelihood of confusion for famous marks. Moreover, they pleaded that the lower court erroneously treated the fame of the COHIBA marks as an overarching factor in the evaluation of the likelihood of confusion. The Court ruled that no errors had been committed and dismissed the appeal with costs.

This decision is significant as it is a positive acknowledgment by the Federal Court of Appeal that the notoriety of a brand may be established by references to the brand in popular culture.  This case is an example of how trademark practitioners should not be afraid to creatively use the evidence at their disposal to advance their clients’ causes.

For more information please contact Jonathan Roch or Scott Miller

Jonathan Roch, Partner 
T: 613.801.1059
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Scott Miller, Partner 
T: 613.801.1099
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Protecting the Extraction Industry Through Protection of Intellectual Property

By Randy Marusyk, October 8th, 2014

Canada’s abounds with underground riches—the mining, quarrying, oil and gas sectors contributed $124.6 billion to Canada’s economy in 2012, but it faces big competition on the world stage. Staying relevant in the global market will be a key to Canada’s continued economic success. Canada can only stay relevant by continuing to innovate—we must establish ourselves as leaders in cutting edge mining innovation and technology.

The international agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is a critical tool in the protection of Canada’s innovation—it’s intellectual property. Through the TRIPS agreement, Canadian inventors can file their patents worldwide, and receive extended periods of protection, dating back to their Canadian filing date. Filing for a patent early gives the innovator protection not only in Canada, but in all of the 160 countries that are party to the TRIPS agreement.

Canada’s Patent Act is the legal instrument that rewards the first person to file for a patent. Innovators may sometimes feel like an idea ‘just isn’t ready yet’, but that should not prevent inventors from filing for a patent. The Patent Act’s three requirements for patentable technology are as follows: 1. the technology must be new; 2. the technology must be useful; 3. the technology cannot be an obvious permutation of an existing technology. Inventions do not have to be sold or even marketed to qualify for patents. Early filing is key to protecting Canada’s innovation.

Of equal importance to seeking early patent protection for mining technology is whether one has freedom to operate a given technology in Canada and abroad. The existence of patents owned by others can block a party from operating until they obtain a license under the patent. Worldwide patent databases are powerful tools that can tell a company if they have freedom to operate in any particular technological area.

Databases provide much more than a list of patent titles and owners. With these databases, intellectual property lawyers can explore, monitor and map the patent space for any given field. Visual maps, such as the one shown below, can display the areas within a sector that are crowded, or becoming crowded with patents. Knowing where patents are encroaching can help an innovator keep the space around hers or his technology covered by their own patents. Databases can also tell innovators and corporations whether their operating space is already patented, and whether they may require licenses from third parties. Finally, these patent mapping tools can help innovators identify the competitors’ presence in any given technological area.

 Patent Density Map

Patent Density Map Showing Major Patents owned by Technology Resources Pty.


For more information about the benefit to your company on early filing and use of patent databases, contact Randy Marusyk, Managing Partner at MBM Intellectual Property Law at:

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Exercise Caution When Choosing a Trademark – MBM Successfully Expunges The Athletic Club & Design Trademark and Prohibits its Use in Canada.

For Immediate Release, July 11, 2014

th ddc772f125835b4ca64d4befb178b34b tenants logo thealthleticclub62

On July 9, 2014, Mr. Justice Russell of the Federal Court released his decision in Ottawa Athletic Club Inc. v. The Athletic Club Group Inc. (2014 FC 672).

In a proceeding commenced by Notice of Application (a matter where there is no viva voce evidence but rather affidavits and cross-examination occurring outside the Court), Mr. Justice Russell expunged The Athletic Club & Design trademark – registered February 22, 2005 which claimed use from 1997 – and granted a permanent prohibition (injunction) to prevent the use of the trademark and its common law equivalent.

The decision is 150 pages and provides a detailed synopsis of the law and evidence necessary for a determination of:

  1. when a composite trademark ( a trademark incorporating words and a design) will be found to be clearly descriptive of the character of the wares/services in association with which it is used;
  2. whether a trademark is distinctive;
  3. when any trademark has by ordinary and bona fide commercial usage become recognized in Canada as designating the kind of any wares/services;
  4. when a trademark is the name in any language of any wares/services in connection with which it is used;
  5. the effect of a disclaimer on questions relating to clearly descriptive, distinctiveness, and bona fide commercial usage;
  6. whether the 5 year limitation period to assert the ground of a confusing trademark in an expungement proceeding should be waived through imputed knowledge through an adverse interest that the person who adopted the registered trademark did so with knowledge of the previously used trademark; and
  7. when an affiant must disclose documents in connection with a cross-examination.

In obtaining the judgement MBM relied upon a variety of evidentiary sources including hundreds of newspaper articles, legislation and judicial decision citing the term ‘Athletic Club’, confirmation of third party use of the term ‘Athletic Club’, internet searches, corporate searches, trademark searches, cross examination, etc…

The decision will likely be a leading resource for trademark practitioners and those wanting to understand evidentiary requirements and the law in Canada relating to the subjects described above.

If you would like to learn more about the decision please do not hesitate to contact the lead lawyer on the case, Scott Miller or any other member of the MBM litigation team who assisted including Jonathan Roch or Jahangir Valiani.

Scott Miller
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T: 613.801.1099

Jonathan Roch
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T: 613.801.1059

Jahangir Valiani
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T: 613.801.0451



Disparaging & Racist vs. Political Correctness – You Choose. And the Washington Redskins Thought the Battle on the Football Field Was Tough!

By Scott Miller, June 18, 2014

redskins-helmet-jordan-blackThe National Football League team, the Washington Redskins lost a fight of Super Bowl proportions today before the U.S. Patent and Trademark Office. The team’s host of registered trademarks dating back to the 60’s were cancelled on the ground that they were disparaging on the date they were registered and as such, should never have been registered.

The ruling does not prevent the team from using the trademarks but means the team loses the benefits of a registered trademark including the ability to sue for trademark infringement. Not surprisingly, the team’s lawyers have already indicated that the decision will be appealed.

In Canada, the Washington Redskins trademark has been registered since 1980. Under the Canadian Trade-marks Act, a trademark which is “scandalous, obscene or immoral” at the date of registration may be held invalid. So the obvious question remains, would a disparaging trademark in the US be considered “scandalous, obscene or Immoral” in Canada? If challenged in Canada, would we be less, equally or more offended than our neighbours to the south?

Unlike in the US, if a mark in Canada is held “scandalous, obscene or immoral” it cannot be used in the country. The Trade-marks Act specifically indicates that such offensive marks cannot be ‘adopted’ which would thus prevent their use. This raises an interesting question if the U.S. Patent and Trademark Office decision is overturned on appeal but the same fight is engaged in Canada with the Canadian court’s ruling against the team. Would the NFL not televise games or sell merchandise in Canada? Perhaps those opposed to the Washington Redskins should think about using Canada to advance their fight.    

In all, the appeal(s) in the US will likely dictate the fate of the Washington Redskin trademarks in Canada. However, there is a lesson in this not just for sports franchisees but for all trademark owners – choose your trademark’s carefully because your decisions might come back to haunt you years later.

For more information please contact:

Scott Miller
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T: 613.801.1099


 

 

Media Advisory: Crude Solutions Launches Patent Lawsuit Against MEG Energy

FOR IMMEDIATE RELEASE

April 30, 2014 – Crude Solutions Launches Patent Lawsuit Against MEG Energy

Crude Solutions Ltd. (CSL), a research and development firm for the oil and gas industry, has sued
MEG Energy Corp., accusing MEG of infringing CSL’s patent rights.

Crude Solutions Ltd. (CSL), an Edmonton based research and development firm
for the oil and gas industry focusing on steam-assisted gravity drainage (SAGD) extraction
techniques, has sued MEG Energy Corp. (MEG), accusing MEG of infringing CSL’s Canadian
Patent No. 2,800,746 with MEG’s RISER project and eMSAGP process.

The patent infringement lawsuit, filed on Tuesday, April 29, 2014, in the Federal Court of Canada,
states that CSL is the owner of patented technology relating to exploiting pressure gradients in
SAGD oil recovery operations. The lawsuit goes on to allege that MEG had explicit notice of the
proprietary nature of the technology within days of the patent being issued and had constructive
notice as of the publication of the patent in November 2012 and that MEG continues to make use of
its infringing processes in wanton and outrageous disregard of CSL’s rights. MEG’s alleged
infringing eMSAGP process has been and is being implemented in all phases of its Christina Lake
operations and MEG has indicated its intention to implement this process in all of its recovery
operations.

For further information please contact MBM’s litigation team, led by Scott Miller and Paul Sharpe,
who are representing CSL in this patent infringement action.

Scott Miller, Partner

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T: 613.801.1099


Paul Sharpe, Partner

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T: 613.801.1077


PMPRB’S INTERPRETATION OF “PATENTEE” OVERLY BROAD

By Claire & Kay Palmer, May28, 2014

Two recent Federal Court decisions considered the definition of a “patentee” in the context of the mandate of the Patented Medicines Prices Review Board (PMPRB).

Section 2 of the Patent Act states that a “patentee” means the person for the time being entitled to the benefit of a patent.

With respect to Patented Medicines, the English version of Section 79(1) of the Patent Act states that a “patentee”, in respect of an invention pertaining to a medicine, means the person for the time being entitled to the benefit of the patent for that invention and includes, where any other person is entitled to exercise any rights in relation to that patent other than under a licence continued by subsection 11(1) of the Patent Act Amendment Act, 1992, that other person in respect of those rights.

In both decisions, Mr. Justice O’Reilly determined that the PMPRB’s conclusion that two manufacturers of generic pharmaceuticals fell within the definition of “patentee” was unreasonable and thus the applications for judicial review of the PMPRB’s decisions were allowed.

Sandoz Canada Inc v. Canada (Attorney General), 2014 FC 501

The generic manufacture Sandoz Canada Inc is a wholly-owned subsidiary of Novartis Canada Inc, which in turn is a subsidiary of Novartis AG.  Novartis AG is the owner of a number of relevant patents.  Novartis AG provides authorization for Sandoz to enter the market for specific drugs when Novartis AG loses it’s the market exclusivity – i.e. once other generics have entered the market. 

The PMBRB found that Sandoz, by virtue of its position as a subsidiary of Novartis, was a “patentee” and therefore its prices within the jurisdiction of the PMPRB.  Mr. Justice O’Reilly noted that “Sandoz generally operates in a market where no one holds a monopoly, and no one can take undue advantage of a monopoly position by charging excessive prices.”  Mr. Justice O’Reilly further stated that “Sandoz simply does not enjoy the special patent rights that inure to the benefit of the patent holder.  Accordingly, Mr. Justice O’Reilly found that the PMPRB’s conclusion that Sandoz is a “patentee” was unreasonable and therefore the PMPRB “does not have jurisdiction to review prices at which Sandoz, a company holding no patents and no monopolies, sells medicines. “

Ratiopharm Inc. v. Canada (Attorney General), 2014 FC 502

The definition of “patentee” was also examined in the Federal Court (FC) decision Ratiopharm Inc. (now Teva Canada Limited) and Attorney General of Canada (2014FC502). Ratiopharm which sells generic drugs in Canada sold a generic equivalent of Ventolin HFA to pharmacies after having purchased it under contract from the patent holder, GlaxoSmithKline Inc. (GSK).  Under the contract with Ratiopharm, GSK retained all patent rights to its products.  The PMBRB found that Ratiopharm, by virtue of its contract with GSK was a “patentee” and therefore its prices within the jurisdiction of the Board.  Mr. Justice O’Reilly disagreed with the PMBRB and found that the PMPRB’s conclusion that Ratiopharm is a “patentee” was unreasonable. Mr. Justice O’Reilly further noted that the PMPRB “does not have jurisdiction to review prices at which Ratiopharm, a company holding no patents and no monopolies, sells medicines” and thus, allowed the application for judicial review of the PMPRB’s decisions.

Interesting aside…

Mr. Justice O’Reilly noted in both decisions that the French version of Section 79(1) “ties the definition of “patentee” more closely to the rights of the patent holder. It is a narrower definition than in the English version, which includes any person entitled to exercise any rights relating to a patent.

This highlights the critical importance of reviewing both the English and French versions of the legislation when interpreting the statues.

For more information please contact:

Claire Palmer
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T: 613.801.0450

Kay Palmer
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T: 613.801.0452

 

 

LANGUAGE POLITICS AND FRENCH SIGN WARS IN QUEBEC-REVISITED

QUEBEC COURT CONFIRMS FRENCH LANGUAGE WATCHDOG CANNOT BITE ENGLISH TRADEMARKS

By Scott Miller, April 10, 2014

 

On April 9, 2014, the Superior Court in Quebec in Best Buy Stores Ltd. et al v. Quebec (Attorney General) (2014) QCCS 1427, confirmed that the Quebec language watchdog, the Office Québécois de la langue française (OQFL) attempt to cause retailers to modify their brand names to include French signage was contrary to the existing language laws of Quebec.

 

This case is a huge victory for all businesses that wish to maintain brand recognition by using English trademarks in Quebec (ie. Best Buy, The Gap, Costco, Toys R Us, Wal-mart) and not be forced to translate them into French.

 

Section 58 of the Charter of the French Language (French Charter), reads, "public signs and posters and commercial advertising must be in French". However, there are exceptions in the French Charter Regulations (sections 7(4) and 25(4)) which permit English only packaging and signage for "a recognized trade mark within the meaning of the Trade Marks Act, unless a French version has been registered".

 

Justice Michel Yergeau refused the OQFL argument that retailers should use French signage because section 63 of the French Charter reads, "The name of an enterprise must be in French". The Court was not persuaded by political arguments and recognized that for the last 37 years the French Charter has kept a balance of encouraging French language rights with the need to encourage multinational companies to carry on business in Quebec. Simply put, the use of the signage in issue was recognized as trademarks and not as business (trade) names.  

 

This case may be appealed but the political tide is changing in Quebec. The minority Parti Québécois government elected in September 2012 was defeated in a landslide election on April 7, 2014 with a new majority Liberal Government being put in place. The likelihood of the French language being used to divide the people of Quebec over the next 4 years is doubtful.  

 

The Federal Trade-Marks Act 'recognizes' both common law (unregistered) and registered trademarks.  Nonetheless, it still remains an open question whether the OQFL will recognize unregistered trademarks or argue such marks are actually trade names not subject to the English use exception.  As a precautionary measure, it may still be advisable to file for English trademarks to avoid the OQFL. If threatened about the legitimacy of whether an English word is a recognized trademark, it is answerable by noting that the English word is the subject of a pending trademark application.  

 

Further detail of the case can be reviewed by clicking here.

 

For more information please contact Scott Miller or Jahangir Valiani.

 

 

Scott Miller, Partner  

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Canada’s Trademark Law Soon to be Changed – Including Harmonization with International Treaties

By Scott Miller, March 31st, 2014

On March 28, 2014, the Federal Government of Canada tabled a new Bill, C-31, which has long been anticipated by Trademark practitioners in Canada. It is expected that the trademark provisions of the Bill will ultimately become law in Canada. A summary of Bill C-31:

  • The type of registrable trademarks has been widened to include sound, scent, taste and texture which may require evidence of distinctiveness at the date of filing.
  • The renewal fee for registered trademarks will be shortened from 15 to 10 years.
  • The ability to seek expungement of trademarks on the basis of non-use during the last 3 years can now be instituted by the Trademark Office and not just by an interested third party.
  • Canada will implement International Treaties:
    • Madrid Protocol - This treaty paves the way for greater flexibility to file in multiple jurisdictions.
    • Singapore Treaty – Divisional applications will be allowed for (1) those goods/services which are contentious and holding up a potential registration or (2) applications on the basis of proposed use where particular goods/services have yet to be used.
    • Nice Agreement - This agreement ensures that its signatories follow a harmonized system of classification of goods/services.

 

For more information, please contact:

 

Scott Miller, Partner

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Illegal Downloaders Beware – You Can Run but You Can’t Hide Behind Your ISP: Balancing Privacy Rights against the Rights of Copyright Holders

By Scott Miller, February 24th, 2014

The Federal Court of Canada in Voltage Pictures LLC v. John Doe and Jane Doe (2014 FC 161) has set the ground rules for when an Internet Service Provider (ISP) will be required to hand over to copyright holders the names and addresses of individuals suspected of unauthorized downloading of copyright material such as movies and music.

The court ordered the Ontario based ISP TekSavvy to disclose approximately 2000 customer names and addresses to the U.S. production company Voltage Pictures for the alleged unauthorized downloads of such movies as “The Hurt Locker” and “Dallas Buyers Club”.

In Canada, the Copyright Act provides for statutory damages for non-commercial infringement in the range between $100 and $5000. This range was likely implemented to discourage file sharing lawsuits against individuals. However, it is easy to imagine how with the names and addresses of individuals a simple letter to a suspected downloader of, for example, pornography might be embarrassed into paying a settlement without the copyright holder having to file a lawsuit.

To that end the court was extremely sensitive to both the potential rise of the so called ‘Copyright Trolls’ - plaintiffs who file multitude of lawsuits solely to extort quick settlements and the need to safeguard an individual’s right to privacy.

In order to overcome these issues but also balance the right of the copyright holder, the Federal Court instituted the following safeguards before requiring the ISP to deliver the subscriber names and addresses, including:

  •         The moving party must demonstrate a bona fide case (a real intend to sue and there is no other improper purpose)
  •         Disclosure will be only names and address and not phone numbers or email addresses
  •         The information disclosed shall be used exclusively for the purpose of the lawsuit and will not be disclosed to the public/media
  •         The letter to the ISP subscribers will include the court order and a statement that ‘no Court has yet found any recipient of the letter liable for infringement’
  •          The case will be specially managed and a Case Management Judge will approve the demand letter before it is provided to the individuals
  •         The copyright holder shall pay the legal costs of the ISP before the information is provided

The safeguards and limit on damages might still result in some copyright holders bringing lawsuits to deter the public at large from infringing copyright but the economics suggest this will not open the floodgates to litigation before the Federal Court. Likewise, the safeguards do balance the fear against Copyright Trolls and the potential loss of privacy rights.

For more information, please visit CTV National News website to watch Scott Miller’s commentary given during the CTV news coverage of the case.

 
Scott Miller, Partner

T: 613.801.1099

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When is an Engineer not Engineering in a Trade-mark?

Scott Miller, February 18th, 2014

In Kelly Properties, LLC v. Canadian Council of Professional Engineers, 2013 FCA 287, the MBM litigation team successfully overturned the Federal Court decision of Canadian Council of Professional Engineers v. Kelly Properties, LLC, 2012 FC 1344 which found the trademark KELLY ENGINEERING RESOURCES unregistrable in association with personnel employment services, namely, providing temporary, temporary to full-time, and full-time employees having specialized technical skills, education and/or training.

The recent Federal Court of Appeal decision is important for two reasons:

  1. A trade-mark application based on a foreign registration may register regardless of whether a date of first use claimed in a Canadian trade-mark application is correct; and
  2. Just as a trade-mark which is descriptive is registrable if it is not clearly descriptive - A trade-mark which is potentially misdescriptive is registrable if it is not deceptively misdescriptive.

FOREIGN USE BASIS OF REGISTRATION ALIVE AND STRONG IN CANADA:

The Federal Court of Appeal solidified that where a trade-mark application is based on use in Canada and foreign use and registration, the two are pleaded in the alternative. That is, only one of the basis of the application must be met for the application to be considered for registration. Therefore, if the application is found to be unsupported on one ground, it may still be registered on the basis of the alternate ground for registration.

 

DECEPTIVELY MISDESCRIPTIVE NOT TO BE DETERMINED BY GUIDELINES

Each of the Provinces and Territories in Canada include legislation that more or less defines the Practice of Engineering to incorporate the professional application of applied science. The engineering legislation also includes a prohibition of the use of the word engineer/engineering in a trademark if the use may lead the public to believe the trademark owner is engaged in the Practice of Engineering.

Kelly Services sought to register the trademark KELLY ENGINEERING RESOURCES in connection with personnel employment services. The Canadian Council of Professional Engineers opposed registration on the basis that only licensed engineers should be able to use the term “engineering” in a trade-mark. The evidence before the Trade-marks Opposition Board (2010 TMOB 224) demonstrated that Kelly Services is a personnel employment company and its KELLY ENGINEERING RESOURCES division employs and places both engineers and non-engineers with technical training (e.g. draftsmen). However, the Trade-marks Officer determined that personnel employment services would not be the type of technical services that one would expect engineers to provide. As such, the Board found the trade-mark neither clearly descriptive nor deceptively misdescriptive.

The Federal Court agreed with the Trade-marks Officer’s decision that KELLY ENGINEERING RESOURCES was not clearly descriptive of personnel employment services, but found the mark deceptively misdescriptive relying heavily on a non-statutory guideline from the Association of Professional Engineers which provided criteria for when human resource or staffing agencies are allegedly engaged in the Practice of Engineering. The guideline was not before the Trade-marks Officer and the Federal Court concluded that the guideline would have materially affected the decision of the Officer. Thus the Federal Court came to its own conclusion without giving deference to the Trade-marks Opposition Board decision.


The Federal Court of Appeal found the guidelines of the Alberta Association that regulates the profession of engineering to be just that, guidelines and not law. The Court accepted MBM’s argument that the guidelines were merely the opinions of the Alberta Engineering Association and its interpretation was irrelevant for the purpose of trade-mark law. Since all statutes to regulate the term “engineer” were before the Trade-marks Opposition Board, the Court found that the trial judge made a palpable and overriding error in admitting evidence that opined on the scope and the interpretation of those statutes.


The Federal Court of Appeal found that the decision of the Trade-marks Opposition Board was reasonable and confirmed that the trade-mark KELLY ENGINEERING RESOURCES is registrable in association with personnel employment services. The Trade-marks Opposition Board correctly considered the mark as a whole, and recognized the family of KELLY marks used in personnel employment services.


The bottom line is even if one presumed that the mark KELLY ENGINEERING RESOURCES was misdescriptive of personnel employment services (which was not the case), it was clearly not deceptively so.

For more information, please contact:

 
Scott Miller, Partner

T: 613.801.1099

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New Powers to Combat Counterfeit Products in Canada Likely Around the Corner

New Powers to Combat Counterfeit Products in Canada Likely Around the Corner

Scott Miller, October 30th, 2013

combatOn October 28, 2013 the Government of Canada introduced bill C-8 (Combating Counterfeit Products Act) which, if passed, will significantly improve the fight against counterfeit products in Canada.  The bill also includes substantial changes to the Canadian Trade-marks Act. This bill was introduced in the previous session of Parliament but did not proceed when Parliament was prorogued. The bill has been fast tracked and it is expected that it will become law in some form.

Proposed Changes to Stop Counterfeiting:

Currently, in order to stop the importation of counterfeit goods into Canada, a right-holder must proactively obtain a Court order directing that the alleged infringing materials be detected and detained.  The process is costly and requires the right-holder have specific information regarding the importation of the alleged infringing materials. 

Under the bill both the Trade-marks Act and Copyright Act will be changed to include provisions where the Canada Boarder Services Agency (CBSA) will have increased power to combat counterfeit goods from entering Canada at markedly less cost to the right-holder.  A right-holder can file for a standing 2 year ‘Request for Assistance’ with the CBSA which would enable the CBSA to provide the right-holder with samples of suspect products.  The right-holder could then use this information to pursue new remedies under the Trade-marks Act or Copyright Act including both indictable and summary convictions with fines upward of $1,000,000 dollars and/or imprisonment of five years.

Proposed Changes to Trade-mark Law:

The proposed definition of a trade-mark is being considerably broadened to include the following: a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape (currently known as a distinguishing guise), a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign.

Under the proposed bill, trade-marks for three-dimensional shapes, a mode of packaging goods, sound, scent, taste, and texture will require evidence of distinctiveness at the date of filing.

Under current Canadian trade-mark law, registration of a proposed use trade-mark application may occur after allowance where a declaration of use is filed for the wares/services actually used. For those wares/services not used, the application dies in association with those unused wares/services.  Under the bill, an applicant can file a divisional application for those goods/services not used at the time of filing the declaration of use and claim priority to the original application.  

For more information, please contact:

Scott Miller, Partner
Voice: 613.801.1099
Email: This e-mail address is being protected from spambots. You need JavaScript enabled to view it.

Another Win for MBM

Another Win for MBM – Federal Court of Canada Overturns Trademark Opposition Board and Recognizes the Overlap Between Alcohol and Tobacco (Cigars) 

EMPRESSA CUBANA DEL TABACO dba CUBATABACO et al.  v. TEQUILA CUERVO, S.A DE C.V. (2013) FC 1010

Scott Miller and Jonathan Roch, October 8, 2013

127 1Factual Overview

Tequila Cuervo filed a Canadian trade-mark application for the trademark LAZARO COHIBA, disclaiming the word LAZARO.  The application was based on proposed use for “alcoholic beverages, namely rum”. The application was opposed by Cubatabaco on grounds including that LAZARO COHIBA was not registrable based on the likelihood of confusion with the COHIBA registered trademarks for cigars and tobacco.  On September 30, 2008, the Trademark Opposition Board concluded that “in view of the differences between the wares and trades of the parties and the fact that the opponents have not established an extensive reputation for their marks “ that the LAZARO COHIBA trademark was registrable. 

Following the Trademark Opposition Board decision MBM was appointed as counsel to Cubatabaco.  An appeal of the Board’s decision was filed by application to the Federal Court.  The Federal Court overturned the Board’s decision and refused the registration of the LAZARO COHIBA trademark application.

Fame (Extensive Reputation) Demonstrating Without a Survey

MBM was able to demonstrate that the COHIBA trademarks are widely known across Canada by filing new evidence to establish that COHIBA has been referenced in films, television, music and other media, such as print magazines distributed in the United States and Canada.  The fame of the COHIBA trademarks was established not by an expensive survey but by creatively revealing that pop media has used COHIBA cigars to demonstrate social status and wealth. The decision is equally important because it recognizes that for some iconic brands, personal ownership or use of the product is not essential to the awareness of the trademark. Click here to view a copy of the decision. 

Conclusion

There are multiple ways for trademark professionals to establish confusion.  While in some incidents expensive surveys may be necessary that will not always be the case.  

Please contact Scott Miller or Jonathan Roch for more information.

 

Supreme Court Asked to Reconsider Decision to Invalidate Viagra Patent

By Suzanne Hof - November 16 2012

cb photo_91_4f19cd1eeada2

Pfizer Canada Inc. (Pfizer) has asked the Supreme Court of Canada to reconsider its decision to invalidate their Canadian Patent No. 2,163,446, the patent that provided Pfizer with a monopoly for its multi-million dollar erectile dysfunction drug, Viagra.

Pfizer has taken the position that the Court “accidentally granted a remedy in this appeal that exceeds its jurisdiction.”  The proceedings in question were initiated as an application under the Patented Medicines (Notice of Compliance) Regulations, the outcome of which is typically not to determine invalidity or infringement, but rather to determine whether a notice of compliance should or should not be granted.  

In the present case, the present proceedings were initiated as an application for an order prohibiting Teva Canada Limited from obtaining a notice of compliance for its generic version of Viagra.  Pfizer has therefore taken the position that the Supreme Court was acting outside its jurisdiction in its finding of invalidity.  

In particular, Pfizer has applied for an order to amend the Supreme Court’s recent judgment “by replacing the words ‘and Patent 2,153,446 is declared void’ with the words ‘the application below is dismissed and the Order of the Federal Court dated June 18, 2009, prohibiting the Minister from issuing notice of compliance to the appellant is hereby set aside’.”  In the alternative, Pfizer has applied for a re-hearing on the issue of remedy.

We will, of course, be following these proceedings and posting updates.

The read the previous article on this please visit: If There is No Quid Then There Can Be No Quo - Pfizer's Viagra patent invalidated by Supreme Court of Canada

If you have any questions please contact Suzanne Hof

 

If There is No Quid Then There Can Be No Quo - Pfizer's Viagra patent invalidated by Supreme Court of Canada

By Suzanne Hof - November 2012

cb photo_91_4f19cd1eeada2Today, in a unanimous decision, the Supreme Court of Canada sided with Teva Canada Limited in its bid to invalidate Pfizer Canada Inc.’s Canadian Patent No. 2,163,446 (the ‘446 patent), thereby clearing the way for generic companies to manufacture and sell a generic version of the multi-million dollar erectile dysfunction (ED) drug, Viagra.

This decision hinged on the finding that the ‘446 patent did not satisfy the disclosure requirements under Section 27(3) of the Patent Act. In this regard, the Supreme Court overturned the findings of both the Federal Court and the Federal Court of Appeal that the ‘446 patent did, in fact, provide sufficient disclosure.

The question of sufficiency was raised around whether the specification would have enabled the public “to make the same successful use of the invention as the inventor could at the time of his application” because it does not indicate that sildenafil (the active compound in Viagra) is the effective compound. Although the ‘446 patent does state that “one of the especially preferred compounds induces penile erection in impotent males,” there is no indication which of the several specific compounds identified throughout the description of the patent is this “especially preferred” compound, i.e., sildenafil. Nor does the specification state that the remaining compounds identified in the ‘446 patent were found not to be effective in treating ED.

Furthermore, although claims 6 and 7 are each directed to specific single compounds, there is no indication in the specification that claim 7 relates to sildenafil. By omitting any clear statement that the sildenafil is the active compound, the Supreme Court found that:

 

There was no basis for a skilled person to determine which of Claim 6 and Claim 7 contained the useful compound, further testing would have been required to determine which of those two compounds was actually effective in treating ED.

 

According to fundamental principles underlying the patent system, adequate disclosure of the invention in the specification is a precondition for the granting of a monopoly to an invention. It is this “bargain”, or quid pro quo, that the Court references (“[i]f there is no quid – proper disclosure – then there can be no quo – exclusive monopoly rights”) in its finding that the patent be deemed invalid.

http://scc.lexum.org/decisia-scc-csc/scc-csc/scc-csc/en/item/12679/index.do

If you have any questions please contact Suzanne Hof

Please read the UPDATE on this in our on Nov 16, 2012 NEWSFLASH - Supreme Court Asked to Reconsider Decision to Invalidate Viagra Patent

 

Newsflash (Homepage)

SCOTT MILLER AND THE MBM LITIGATION TEAM SUCCESSFULLY SET ASIDE A DECISION...Read More

Newsflash

Here you will find the full text versions of the MBM & MBM.LAW news and articles contained in each of our e-newsletters as well as archived articles from past newsletters.

Join our mailing list and stay informed on recent developments in Canadian intellectual property law by receiving our informative newsletter direct to your inbox in March, June, September and December.

July 11  2017 NEWSFLASH

Supreme Court of Canada Upholds Order for Google to Block Search Results Globally

June 30  2017 NEWSFLASH

The Supreme Court of Canada Knocked Down the "Promise Doctrine” for Determining Utility

June 26  2017 NEWSFLASH

Update: CASL Private Right of Action Suspended, But Be Careful, Other CASL Provisions are still Alive

June 15  2017 NEWSFLASH

Upcoming Amendments to the Patent Rules, Industrial Design Regulations, and the Trademarks Regulations

May 30  2017 NEWSFLASH

Lifting the Cloak of Anonymity of Copyright Infringers Online

May 23  2017 NEWSFLASH

A balance between confidentiality orders and the open court principle in patent litigation

May 9  2017 NEWSFLASH

A Ticket to Success: Ontario Launches its Scale-Up Vouchers Program for Innovative Technology Companies

May 2  2017 NEWSFLASH

Innovative Medicines in Canada: important Patent questions to ask

April 18  2017 NEWSFLASH

In for a penny, in for a pound…

April 3  2017 NEWSFLASH

Government Funds to Good Use: Helping Small Businesses with First-Time Patent Costs

March 27  2017 NEWSFLASH

CASL Warning! Private right of action is coming  

March 7  2017 NEWSFLASH

Learning the Game – A Patent Process and Timeline

February 22  2017 NEWSFLASH

The Benefits of Registering a Patent in Canada

February 8  2017 NEWSFLASH

Buyers of Keywords Beware! Content of Ads May Spell Confusion

February 6  2017 NEWSFLASH

A Word of Caution: File Wrapper Contents Can Come Back to Haunt You

January 24  2017 NEWSFLASH

A Lesson in Costs: Know your Patent Claims before Asserting Infringement

January 10  2017 NEWSFLASH

How Does CETA Affect IP Rights in Canada?

November 22  2016 NEWSFLASH

In the Province of Québec Foreign-Language Outdoor Signage to Have "Sufficient Presence" of French

November 15  2016 NEWSFLASH

From Filing to Registration: the Canadian Trademark Application Process

October 17  2016 NEWSFLASH

Benefits of Registering a Trademark in Canada

sEPTEMBER 15  2016 NEWSFLASH

Humanized Antibodies: CIPO Picks Up the Pace

august 18  2016 NEWSFLASH

Voltage Pictures Strikes Again: The Privacy Battle Between ISPs and Copyright Holders.

July 12  2016 NEWSFLASH

Important Milestone in the Canadian IP Law - We Finally Have Privilege!

February 9  2016 NEWSFLASH

Leonardo Da Vinci Is Still Alive!

June 29  2015 NEWSFLASH

Canada Just Became a More Attractive Jurisdiction to Litigate.

March 30 2015 NEWSFLASH

Trademarks in Canada and the Madrid Protocol.

January 23 2015 NEWSFLASH

Federal Court of Appeal Confirms Use of Pop Culture to Demonstrate Fame of a Mark.

October 8 2014 NEWSFLASH

Protecting the Extraction Industry Through Protection of Intellectual Property.

July 10 2014 NEWSFLASH

Exercise Caution When Choosing a Trademark – MBM Successfully Expunges The Athletic Club & Design Trademark and Prohibits its Use in Canada.

June 18 2014 NEWSFLASH

Redskins - Disparaging & Racist vs. Political Correctness - You Choose.

May 28 2014 NEWSFLASH

PMPRB's Interpretation of "Patentee" Overly Broad

April 30 2014 NEWSFLASH

Media Advisory: Crude Solutions Launches Patent Lawsuit Against MEG Energy

April 10 2014 NEWSFLASH

Language Politics and French Sign Wars in Quebec - Revisited

MArch 31 2014 nEWSFLASH

Canada's Trademark Law Soon to be Changed - Including Harmonization with International Treaties

February 24 2014 nEWSFLASH

Illegal Downloaders Beware – You Can Run but You Can’t Hide Behind Your ISP: Balancing Privacy Rights against the Rights of Copyright Holders

February 18 2014 nEWSFLASH

When is an Engineer not Engineering in a Trade-mark?

February 5 2014 nEWSFLASH

MBM Intellectual Property Law Has Moved!

January 17 2014 nEWSFLASH

The Intellectual Property Process: Some Historical and Practical Considerations

OCTOBER 31 2013 newsflash

New Powers to Combat Counterfeit Products in Canada Likely Around the Corner

OCTOBER 4 2013 newsflash

Another Win for MBM – Federal Court of Canada Overturns Trademark Opposition Board and Recognizes the Overlap Between Alcohol and Tobacco (Cigars)

June 6 2013 newsflash

Supreme Court Asked to Reconsider Decision to Invalidate Viagra Patent

June 2013 newsletter

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DR. Michael Maskery

Patent Agent


Michael's practice focuses on the patent drafting, prosecution and strategy in a variety of technology fields.MBM read_more_btn

 

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About MBM

 The process of invention is complete only with the IP protection provided in law. That's where MBM comes in. We match our clients' creative thinking with the creative protection needed to achieve their goals.Read More About MBM

MBM Successfully Upholds Agreement to Restrict Use of Descriptive Terms – This time before the Court of Appeal for Ontario

MBM Successfully Upholds Agreement to Restrict Use of Descriptive Terms – This time before the Court of Appeal for Ontario...Read More