The professionals at CPST are thought leaders on intellectual property issues. Check back frequently for the latest updates.
*These publications represent a general discussion of certain legal and related developments and should not be relied upon as legal advice.
Choose Your Own Source: Adding A Trademark to Someone Else’s Goods
In a recent decision arising from an appeal of a decision of the Trademarks Opposition Board, the Federal Court commented on when a retailer can establish use of a trademark on goods when the retailer is not the “source” of the goods. Specifically, if a retailer simply affixes its own trademark to goods manufactured by a third party, does that constitute use of the retailer’s trademark in association with those goods.
Hot Dog!: Injunction Overturned in “Bombay Frankie” Case
Interlocutory injunctions in Canadian trademark cases are rare. The decision at first instance to grant a motion for an interlocutory injunction in a dispute related to the “Bombay Frankie” trademark therefore made headlines, at least in trademark circles, for two reasons. First, the fact that the injunction had been granted was in itself noteworthy. Second, many in the intellectual property bar were of the view that the decision misapplied certain fundamental principles of trademark law and therefore introduced uncertainty into the law.
I Can’t Wait! Speeding Up Processing of Your Canadian Trademark Applications
Canada continues to make news (the wrong kind) when it comes to the slow pace of its examination of trademark applications. Despite repeated promises by the Canadian Intellectual Property Office (“CIPO”) to speed things up, the problem is only getting worse. However, there are some promising signs.
Making the French Connection: Changing Requirements for Use of English Trademarks in Québec
Amendments recently made by Québec to its language laws will have a significant impact on the rights of trademark owners to use English-language versions of their trademarks in the province. The changes to the existing legislation were introduced by Bill 96 (an Act respecting French, the official and common language of Québec) and will apply to all businesses operating or having employees in the province of Québec.
The Summer of 70 (+ Life of the Author): Canada to Extend Copyright Term (and Bryan Adams has thoughts)
Canada’s copyright protection has, for some time, been out of step with most of its major trading partners. To remedy that, Canada will be extending the basic term of copyright protection to life of the author, the remainder of the calendar year in which the author dies, and a period of 70 years following the end of that calendar year.
Claim Canada: Restrictions on Commercial Use of Canadian Symbols
The commercial use of Canadian symbols is restricted by trademark and related law. This article outlines some of the restrictions, including recent guidance from the Canadian government.
No Problem, No Solution! Federal Court Clearly Rebukes CIPO’s “Problem-Solution” Approach to Assessing Patentable Subject Matter
The Federal Court of Canada has clarified the proper approach in assessing the patentability of computer-implemented inventions.
Changing The Rules - Patent Prosecution Strategies Under the new Patent Rules
Amendments to the Canadian Patent Rules (Rules) will soon come into effect and will introduce new provisions that are aimed at reducing prosecution times. These amendments will require applicants to abandon some long-standing practices for prosecuting patent applications in Canada. A few of the major changes to the Rules are discussed below along with some recommendations to mitigate against potential effects on applicants.
Patents and Confidentiality in the Canadian Oil Patch
Over the past decade, there have been several Canadian patent cases that have turned, in large part, on the issue of whether a patent was invalid due to the inventor’s prior public disclosure of their invention. An analysis of the decisions reveals a number of key issues that will determine whether or not a prior disclosure is capable of invalidating the underlying patent.
Don’t Stink Up the Joint Ownership: Co-Owning Intellectual Property in Canada
One of the most difficult terms to negotiate as part of any joint venture or other co-development agreement relates to ownership of intellectual property (IP) developed as part of the venture. Often the parties compromise and agree to jointly own any IP that is developed. This article will canvass the rights of co-owners of IP under Canadian law and provide some guidance as to how co-owners can protect their rights.
Say My Name: Protecting Names and Surnames in Canada
Registering the name of an individual as a trademark in Canada poses unique challenges. These challenges frequently impact celebrities wanting to protect their name but can also impact businesses that are named after their founders. This article outlines the challenges and provides some potential solutions.
Who Owns What? Employer and Employee Ownership of Intellectual Property in Canada
The vast majority of intellectual property owned by a business is developed by employees in the course of their employment. Surprisingly, many companies (especially in the start-up context) do not have a grasp on intellectual property developed by employees. This article breaks down the various ownership situations for intellectual property created by employees in Canada.
A Decade of Canadian Trademark Surveys Post-Masterpiece
It has now been a decade since the Supreme Court of Canada’s decision in Masterpiece v. Alavida, where the court had some harsh words regarding the use of expert evidence in trademark cases. At the time, many predicted that the case would signal the death of surveys evidence in trademark cases. A review of the cases that have been decided since Masterpiece reveals that, although Canadian courts are giving closer scrutiny to trademark surveys, they are continuing to admit well-designed and well-conducted surveys. At the same time, however, courts have also used the Masterpiece decision as justification for rejecting surveys and other expert evidence.
Taking Comfort in the Past – Canada’s New Prior Use Patent Infringement Defence
In 2018, amendments to Canada’s Patent Act changed the nature and scope of certain defences to patent infringement. A new decision of the Federal Court of Canada was the first to consider the scope of the new prior use defence.
Everything Costs More Nowadays: Update on Costs Awards in Canadian Patent Litigation
In our July 2020 article, “Moving on Up: Increased Costs Awards in Canadian Patent Litigation”, we discussed the trend in the Federal Court of Canada towards awarding increased costs to the successful party in patent litigation. In this article, we provide an update regarding some of the cases that have been decided over the past year. These cases have addressed issues such as when an award based on a percentage of the successful party’s legal fees may not be appropriate and whether the court has discretion to go beyond the 25% to 50% range when fixing costs as a percentage of actual legal fees.
Overbreadth: Don’t Let Your Patent Specification Hold Your Claims Back
In Canada, defendants in patent infringement proceedings often plead that the asserted claims are invalid for being overbroad. The doctrine of overbreadth (sometimes referred to as “covetous claiming”) stems from the bargain at the heart of the patent system; it seeks to limit claims to only the invention disclosed to the public in the specification. The doctrine of overbreadth applies where claims are directed to (a) more than is described in a patent, or (b) more than the inventor has invented.
Canadian Border Measures Regarding Intellectual Property Infringements
Like most countries, Canada has a system in place that allows owners of certain intellectual property rights to ask Customs to detain goods at the border that may infringe those rights. This article discusses the details of Canada’s system of border enforcement.
A Concrete Reason to Consider Template Contracts: Patterned Concrete Mississauga Inc v Bomanite Toronto Ltd
A recent decision of the Federal Court of Canada highlights the risks for companies adopting what appear to be "template" or industry standard documents. In such cases, care need to be taken to ensure that you are not infringing copyright.
Fair Minded: Federal Court of Canada Continues to Expand Scope of Fair Dealing
A recent decision of the Federal Court of Canada considered the scope of fair dealing in respect of the use of a copyrighted work in relation to criticism.
What’s the Difference? Patent Claim Differentiation in Canada
In Canadian patent infringement or validity litigation, the patent claims in issue must first be construed in order to ascertain the meaning of words in the claims, as well as the scope of the claims. It is only once this step has been completed that the court can then go on to determine whether the claims are valid and/or have been infringed. Over the years, Canadian courts have developed a number of principles that govern the construction of patents. One of these principles, namely claim differentiation, is discussed in this article.
Fast and Curious: CIPO Announces Steps to Speed up Trademark Examination
In order to address its steadily-worsening backlog, the Canadian Intellectual Property Office has announced some changes to trademark examination procedures that it hopes will speed up the process.
Without Abandonment: A Simplified Way to Add or Amend Claims in Canada after Allowance
With the changes to Canada’s Patent Rules that came into effect on October 30, 2019, an avenue is now available for amending the claims of an application after allowance without the need to abandon and reinstate the application. This avenue simplifies the procedure for having additional claims considered after receiving a notice of allowance, which is routinely desired in view of Canada’s strict double-patenting prohibition.
Handbags and Ochre and Hearts, Oh My!: A Survey of Canadian Trademark Applications for Textures, Holograms, Motions and Colours
In June 2019, the Canadian Intellectual Property Office (“CIPO”) began accepting applications for certain new types of non-traditional marks. We surveyed the applications filed to date for marks indexed as textures, holograms, motions, or colours per se. Our research revealed that the majority of such applications have been improperly (perhaps inadvertently) filed in these categories and/or failed to include the information and details required by CIPO.
Know Your Role: Federal Court Considers its Jurisdiction
The Federal Court of Canada is a creature of statute and only possesses the jurisdiction that has been conferred by statute. However, many claims include subject matter both inside and outside of that jurisdiction. The question of when the Federal Court can and should accepted matters is not always easy. A couple of recent cases highlight that tension.
Watch What You Say! Prosecution History Estoppel in Canada
In Canada, the use of patent prosecution history in litigation proceedings was strictly impermissible until 2018, when the Patent Act was amended. The Act now allows certain submissions made during prosecution to be introduced as evidence for construing granted claims. This practice is now regularly invoked when patent claims are asserted and the accused infringer seeks to limit their scope.
Tasty Trademarks: An Analysis of the Canadian Trademark Applications Covering Taste
A distinctive taste may enable consumers to identify a particular brand. Such tastes can now be the subject of trademark registrations in Canada.
Tips When Using the Madrid Protocol to Register a Trademark in Canada
Filing into Canada through the Madrid Protocol can raise unexpected issues for applicants. In this article, we highlight some of the unique issues related to prosecuting such an application in Canada.
Cannabis Branding - Part 2: Restrictions on Promotion of Cannabis in Canada
Since the legalization of recreational cannabis in Canada in October 2018, there has been a surge of trademark applications filed in connection with cannabis-related goods and services. In the second of our two part series, we take a look at some restrictions on the promotion of cannabis in Canada .
Cannabis Branding - Part 1: What Cannabis Companies Need to Know about Securing Trademarks in Canada
Since the legalization of recreational cannabis in Canada in October 2018, there has been a surge of trademark applications filed in connection with cannabis-related goods and services. In the first of our two part series, we take a look at some of the opportunities and challenges in protecting trademarks in the cannabis space.
With Distinction: Addressing Distinctiveness Objections during Canadian Trademark Prosecution
Objections alleging that a trademark is not inherently distinctive have become one of the most controversial aspects of the changes to Canada’s trademark law. In this article, we review what this objection means and how to consider addressing it.
Canada’s Forever Register: Newfoundland Trademark Registrations
Canadians are at least passingly familiar with the fact that Newfoundland and Labrador has its own time zone. What is less commonly known is that Newfoundland and Labrador also has its own register of trademarks – the only province to do so. Given historical quirks, those registrations may last forever.
Standard of Review For Appeals From The Trademarks Opposition Board in Canada
In December 2019, the Supreme Court of Canada released a decision which revised the standard of review for appeals from various administrative boards, including from the Trademarks Opposition Board.
Brew Branding: Nine Intellectual Property Issues that Craft Breweries Should Consider
As the beer market becomes more crowded, one of the most important business considerations, aside from brewing a delicious product, is branding. We have therefore compiled a list of the top nine intellectual property issues that craft breweries should consider.
Canada’s Official Marks – A Public Nuisance?
Canada’s Trademarks Act, in addition to providing protection for the various categories of trademarks that are recognized around the world (such as word marks, designs, shapes of goods, etc.) also provides protection for the “official marks” of public authorities. As discussed below, official marks can create a number of problems for trademark owners who are looking to protect their marks in Canada. This article provides a summary of the official mark system and discusses some of the options available to a trademark owner who is confronted with an official mark.
Second Kick at the Can: Post-Grant Proceedings Involving Canadian Patents
Once a Canadian patent has issued, it can be the subject of various types of proceedings. This article will provide an overview of both proceedings that are adjudicated by the Patent Office (such as reissue and re-examination) and proceedings that are determined by the courts (such as declaratory actions in respect of infringement and validity).
Out of the Ordinary: Requirements for Describing Goods and Services in Canadian Trademark Applications
One issue trademark applicant's in Canada often face is a requirement to specify the goods and services in "ordinary commercial terms". The requirement of specificity under Canadian trademark law is arguably the highest threshold of any country. Learn more about how to overcome such objections.
You can’t do that! Federal Court quashes the “problem-solution” basis for rejecting claims
In a recent decision, the Federal Court of Canada declared that the policy adopted by the Canadian Intellectual Property Office (“CIPO”) for determining subject matter eligibility of claims to computer-implemented inventions is improper. The CIPO’s policy served as a basis for rejecting many patent applications in Canada, so the decision is welcome news to applicants.
Trademark Licensing in Canada: Everything You Need to Know You Can Learn From The Hells Angels
One phrase most lawyers (and people in general) have likely never uttered is “you should be more like the Hells Angels”. However, an exception may be available when it relates to trademark licensing.
Moving on Up: Increased Costs Awards in Canadian Patent Litigation
In recent years, Canada’s Federal Court has shown a clear trend towards awarding increased costs to the successful party in patent litigation.
Trademark Enforcement Tips and Traps: Navigating Canada’s Trademark System One Year After the Major Changes
On June 17, 2019, the most significant changes to Canada’s trademark system in over 60 years took effect. At the one-year anniversary of the changes, we are assessing the impact that they have had on Canadian trademark practice. We will provide some practical tips and also identify some traps in dealing with the altered trademark landscape, in this case as it relates to enforcement.
Trademark Prosecution Tips and Traps: Navigating Canada’s Trademark System One Year After the Major Changes
On June 17, 2019, the most significant changes to Canada’s trademark system in over 60 years took effect. At the one-year anniversary of the changes, we are assessing the impact that they have had on Canadian trademark practice. We will provide some practical tips and also identify some traps in dealing with the altered trademark landscape, in this case, as it relates to prosecution and maintenance.
The Scent of a Crayon: Unique Complications with Scent and Other Non-Traditional Trademarks in Canada
A distinctive scent may even enable consumers to identify a particular brand. Such scents can now be the subject of trademark registrations in Canada.
Follow the Rules! Recent Changes to Canada’s Patent Procedures
On October 30, 2019, Canada’s Patent Rules were amended to implement changes that were made to the Patent Act. A number of these amendments require applicants to modify their approach to filing and prosecuting patent applications in Canada. Some of the more important changes are summarized here along with recommended strategies to avoid potential pitfalls.