Patent and trademark agent privilege recognised
Comprehensive Economic and Trade Agreement signed

Geographically descriptive trademarks law and office practice clarified
Test for obviousness-type double patenting clarified
Injunctions for retailers of television set-top boxes
Norwich order in reverse class action for copyright infringement
Issue payment underpayment does not render patent invalid
Public display of non-French trademarks in Quebec
Competition Bureau releases revised IP enforcement guidelines


Patent and trademark agent privilege recognised

Amendments to Canada's Patent Act and Trademarks Act, which came into force in June 2016, have provided for the recognition of patent agent and trademark agent privilege. In recognition of the multi-jurisdictional realities of patent and trademark procurement, these privileges also extend to communications between an individual who is authorised to act as a patent agent or trademark agent in a country other than Canada, provided that certain pre-conditions are met.

These changes represent welcome developments for Canadian patent and trademark practice and provide clarity for patent and trademark owners in Canada (for further details please see "Amendments recognise patent agent and trademark agent privilege").

Comprehensive Economic and Trade Agreement signed

On October 30 2016 Canada and the European Union officially signed the Comprehensive Economic and Trade Agreement. The next day, proposed legislation intended to implement CETA was introduced before Canada's House of Commons.

Bill C-30 makes amendments to a broad range of Canadian laws, including IP legislation. Of particular note, under Bill C-30, holders of pharmaceutical patents will be entitled to term extensions of up to two years to account for regulatory delays. Implementation of CETA will also bring other changes to Canada's IP laws, including a potential end to 'dual litigation' in relation to pharmaceutical patents and the restriction of certain European geographical indications (for further details please see "Bill C-30 to implement CETA: implications for pharmaceuticals").(1)

Geographically descriptive trademarks law and office practice clarified

The Federal Court of Appeal revisited the law relating to trademarks alleged to be clearly descriptive or deceptively misdescriptive of origin in its February 23 2016 decision in MC Imports Inc v AFOD Ltd (2016 FCA 60) (for further details please see "Federal Court of Appeal seeks to clarify law relating to descriptive or misdescriptive trademarks").

On November 9 2016 the Trademarks Office released a practice notice setting out how the Trademarks Office will apply Section 12(1)(b) of the Trademarks Act in view of that decision. In future, the Trademarks Office will consider a trademark clearly descriptive of a place of origin if the trademark is a geographic name (ie, where research shows that a trademark's only, primary or predominant meaning is as a geographic name) and the associated goods or services originate from that location. A trademark will be considered deceptively misdescriptive of a place of origin if:

  • the trademark is a geographic name;
  • the goods or services do not originate from that location; and
  • the ordinary consumer would be misled as to the origin of the goods or services.

Test for obviousness-type double patenting clarified

On April 20 2016 the Federal Court of Appeal issued its decision in Mylan Pharmaceuticals ULC v Eli Lilly Canada Inc (2016 FCA 119). The decision clarified the test for obviousness-type double patenting, making clear that it is the claims of the first and second patents that are to be compared to determine "whether there is an inventive step from the first patent to the second". However, the court declined to clarify which of the priority date of the first and second patents is relevant for assessment of obviousness-type double patenting (for further details please see "Federal Court of Appeal opines on framework for analysing obviousness-type double patenting").

The Federal Court of Appeal subsequently maintained that the relevant date for assessing obviousness-type double patenting is an open question in Canadian law in its judgment in Apotex Inc v Eli Lilly Canada Inc (2016 FCA 267).(2)

Injunctions for retailers of television set-top boxes

An interlocutory injunction was granted by Justice Tremblay-Lamer of the Federal Court to plaintiff broadcasters and broadcast distribution undertakings against defendant retailers of television set-top boxes pre-loaded with applications that provide their users with unauthorised access to copyrighted television content.

In its reasons, the court found that the plaintiffs had established a strong prima facie case that:

  • the sales of such set-top boxes constituted violations of both the Copyright Act and the Radiocommunication Act;
  • the plaintiffs would suffer irreparable harm if the injunction were not granted; and
  • the balance of convenience weighed in favour of granting the injunction.

The decision illustrates the willingness of the Federal Court to grant injunctive relief against those that participate in and encourage infringing activity (for further details please see "Injunction against retailers of set-top boxes loaded with infringing applications").

Norwich order in reverse class action for copyright infringement

On July 28 2016 the Federal Court released its decision in Voltage Pictures LLC v John Doe (2016 FC 881), a motion by the plaintiffs against the non-party respondent Rogers Communications Inc to disclose the identity of John Doe. John Doe is a proposed representative respondent in a reverse class action lawsuit being brought by the plaintiffs against a number of unidentified Canadians whom the plaintiffs allege have infringed copyright in certain motion pictures.

The court ordered Rogers to disclose the individual's name and address, but not other additional personal information sought by the plaintiffs, including the individual's email address and phone number. However, the court refused to allow the plaintiffs to pass their enforcement costs on to Rogers and its customers, and instead ordered that Rogers be paid at its hourly rate for its fees in providing the information (a decision which the plaintiffs have appealed).

The court has not yet ruled on whether the proceeding will be class certified. Regardless, the decision to release the information represents an important procedural step in favour of the availability of such relief in Canada.

Issue payment underpayment does not render patent invalid

In a decision reconciling two conflicting lines of Canadian jurisprudence, the Federal Court clarified that, unlike a substantive breach of the Patent Act going to the heart of the patent bargain, an administrative breach of the statute can be fatal only to a patent application.

More particularly, the Federal Court in Apotex Inc v Pfizer Inc (2016 FC 136) held that the fact that the final fee for issuance of a patent was erroneously paid at the small entity level for a large entity did not then serve to invalidate the patent that was subsequently issued (for further details please see "Federal Court holds issued patent valid despite erroneous issue fee payment").

Public display of non-French trademarks in Quebec

Amendments to Quebec's Charter of the French Language aimed at ensuring the presence of French language on the storefronts of businesses that display non-French trademarks on public signs entered into force on November 24 2016. Where a non-French trademark appears on a public sign or poster outside an immovable property in Quebec, the non-French trademark must be accompanied by:

  • a generic term or a description of the products or services; or
  • a slogan or another French-language indication informing consumers and passers-by of the products or services offered.(3)

Competition Bureau releases revised IP enforcement guidelines

Following an extensive public consultation and earlier drafts, the Competition Bureau released a revised version of its IP Enforcement Guidelines on March 31 2016. The revised guidelines provide clarifications and additional guidance on the bureau's approach to patent settlements, product switching, patent assertion entities and standard-essential patents (for further details please see "Competition Bureau releases revised IP Enforcement Guidelines").

For further information on this topic please contact Nelson Godfrey at Smart & Biggar/Fetherstonhaugh's Vancouver office by telephone (+1 604 682 7780) or email ([email protected]). Alternatively, contact Neil Padgett at Smart & Biggar/Fetherstonhaugh's Toronto office by telephone (+1 416 593 5514) or email ([email protected]). The Smart & Biggar/Fetherstonhaugh website can be accessed at www.smart-biggar.ca.

Endnotes

(1) For further details regarding CETA and its implications for IP protection in Canada see here and here.

(2) For further details on these decisions see here and here.

(3) For further details on these amendments, including the transitional provisions for existing public displays, see here.