Opposition Board Confirms Proper Approach to Showing Use through Licensee Opposition Board Confirms Proper Approach to Showing Use through Licensee

Trademark
December 14, 2016December 14, 20162016-12-15
In Johnston Law v 2341375 Ontario Inc, (2016 TMOB 169) the Trademarks Opposition Board addressed the requirements for demonstrating use of a trademark through a licensee in the context of summary non-use cancellation proceedings. The decision contains an overview of the methods through which a registered owner can show use.
Deeth Williams Wall http://www.dww.com/articles/opposition-board-confirms-proper-approach-to-showing-use-through-licensee

Rubik’s Cube EU Trademark Invalidated Rubik’s Cube EU Trademark Invalidated

Copyright
December 14, 2016December 14, 20162016-12-15
In Simba Toys GmbH & Co KG v European Union Intellectual Property Office, the Court of Justice of the European Union (CJEU) discussed the legal criteria relevant to determining whether a trademark is functional so that it should be invalidated.
Deeth Williams Wall http://www.dww.com/articles/rubik%E2%80%99s-cube-eu-trademark-invalidated

Date for Assessing Obviousness-Type Double Patenting Remains Unsettled in Canada Date for Assessing Obviousness-Type Double Patenting Remains Unsettled in Canada

Patent
November 30, 2016November 30, 20162016-11-30
We previously reported in E-TIPS® Newsletter that the Federal Court of Appeal (FCA), in Mylan Pharmaceuticals ULC v Eli Lilly Canada Inc, 2016 FCA 119 (Mylan FCA), declined to determine an appropriate date for assessing obviousness-type double patenting, although it rejected the publication date of the later patent as being a relevant date for the analysis.  Mylan FCA conce
Deeth Williams Wall http://www.dww.com/articles/date-for-assessing-obviousnesstype-double-patenting-remains-unsettled-canada

Fair Dealing Found for Lucy and Ethel (and the Rest of the Department of Finance) Fair Dealing Found for Lucy and Ethel (and the Rest of the Department of Finance)

Intellectual Property
November 30, 2016November 30, 20162016-11-30
The recent copyright decision of 1395804 Ontario Ltd. v Canada (AG), 2016 FC 1255 elaborated on Supreme Court jurisprudence on the principle of fair dealing.
Deeth Williams Wall http://www.dww.com/articles/fair-dealing-found-for-lucy-and-ethel-and-rest-of-department-of-finance

New French Language Requirements for Non-French Signage in Quebec New French Language Requirements for Non-French Signage in Quebec

Intellectual Property
November 30, 2016November 30, 20162016-11-30
On November 24, 2016, amendments to the Regulation respecting the language of commerce and business (Regulation) (link) under Québec’s Charter of the French Language (Charter) came into force.  The amendments require non-French trade-marks appearing on signs or posters outside buildings and structures in Québec to be accompanied by a sufficient presence of French.
Deeth Williams Wall http://www.dww.com/articles/new-french-language-requirements-for-nonfrench-signage-quebec

CIPO Releases First IP Canada Report CIPO Releases First IP Canada Report

Intellectual Property
November 30, 2016November 30, 20162016-11-30
On November 10, 2016, the Canadian Intellectual Property Office (CIPO) released its first intellectual property (IP) Canada report (the Report), detailing various trends in IP filing activities in Canada and abroad. 
Deeth Williams Wall http://www.dww.com/articles/cipo-releases-first-ip-canada-report

CETA Implementation Bill C-30 Expands Protection for Geographical Indications CETA Implementation Bill C-30 Expands Protection for Geographical Indications

Trademark
November 30, 2016November 30, 20162016-11-30
As previously reported in E-TIPS® Newsletter, the Canadian government has tabled Bill C-30, outlining measures to implement the Canada-European Union Comprehensive Economic and Trade Agreement (CETA).  Regarding Canadian trademark law, the legislation expands protections for geographical indications (GIs).
Deeth Williams Wall http://www.dww.com/articles/ceta-implementation-bill-c30-expands-protection-for-geographical-indications

US Justice Department Petitions for En Banc Rehearing of Microsoft Cloud Decision US Justice Department Petitions for En Banc Rehearing of Microsoft Cloud Decision

Privacy
November 16, 2016November 16, 20162016-11-16
The US Justice Department has petitioned for an en banc rehearing by the US Second Circuit Court of Appeals (the Court) after the Court concluded that US courts were not authorized under the Stored Communications Act to issue and enforce warrants against US-based internet service providers for the disclosure of customer email content stored on foreign servers that is within the control of US-based companies.
Deeth Williams Wall http://www.dww.com/articles/us-justice-department-petitions-for-en-banc-rehearing-of-microsoft-cloud-decision

Minister’s PM(NOC) Decision to be Reviewed on the Standard of Reasonableness Minister’s PM(NOC) Decision to be Reviewed on the Standard of Reasonableness

Patent Litigation
November 16, 2016November 16, 20162016-11-16
Under the Patented Medicines (Notice of Compliance) Regulations (the Regulations), the Minister of Health (the Minister) determines whether a generic manufacturer’s drug submission makes either a direct or indirect comparison to a Canadian reference product (a brand product). If the Minister finds that it does reference a brand product, the generic manufacturer will be required to address the patents listed on the Patent Register for the brand product before it can receive a Notice of Compliance (NOC), which is a regulatory requirement for market entry.
Deeth Williams Wall http://www.dww.com/articles/minister%E2%80%99s-pmnoc-decision-to-be-reviewed-on-standard-of-reasonableness

Ontario Court Dismisses Land Surveyors’ Class Action Copyright Proceeding against Teranet Ontario Court Dismisses Land Surveyors’ Class Action Copyright Proceeding against Teranet

Copyright
November 16, 2016November 16, 20162016-11-16
The Ontario Superior Court (the Court) granted Teranet Inc’s (Teranet’s) motion for summary judgment in Keatley Surveying v Teranet (2016 ONSC 1717), deciding a long-standing dispute between land surveyors and Teranet, which manages Ontario’s electronic land registry system.
Deeth Williams Wall http://www.dww.com/articles/ontario-court-dismisses-land-surveyors%E2%80%99-class-action-copyright-proceeding-against-teranet

U.S. Federal Circuit Debates Patent Eligibility for Software Patents in Amdocs (Israel) Limited v Openet Telecom U.S. Federal Circuit Debates Patent Eligibility for Software Patents in Amdocs (Israel) Limited v Openet ...

Patent
November 16, 2016November 16, 20162016-11-16
On November 1, 2016, in Amdocs (Israel) Limited v Openet Telecom, the US Court of Appeals for the Federal Circuit (the Court) reversed the US District Court for the Eastern District of Virginia’s decision and found that a patent claiming a computer program and method for solving an accounting and billing problem faced by network service providers is patent-eligible.  The decision is the most recent application of the Supreme Court of the United States’
Deeth Williams Wall http://www.dww.com/articles/us-federal-circuit-debates-patent-eligibility-for-software-patents-amdocs-israel-limited-v

CIPO Publishes Place of Origin Practice Notice CIPO Publishes Place of Origin Practice Notice

Trademark
November 16, 2016November 16, 20162016-11-16
On November 9, 2016, the Canadian Intellectual Property Office (CIPO) published a practice notice entitled “Place of Origin – Paragraph 12(1)(b) of the Trade-marks Act” (the Notice).  The Notice is intended to clarify the application of the provisions of Section 12(1)(b) of the Trade-marks Act with respect to trademarks that are clearl
Deeth Williams Wall http://www.dww.com/articles/cipo-publishes-place-of-origin-practice-notice

Supreme Court of Canada Hears AstraZeneca’s NEXIUM Appeal on the Promised Utility Doctrine Supreme Court of Canada Hears AstraZeneca’s NEXIUM Appeal on the Promised Utility Doctrine

Pharmaceutical Patent Litigation
November 16, 2016November 16, 20162016-11-16
On November 8, 2016, the Supreme Court of Canada heard oral arguments and reserved its decision in AstraZeneca Canada Inc v Apotex Inc (SCC Case: 36654, esomeprazole – NEXIUM®, the Federal Court of Appeal decision previously reported in E-TIPS Newsletter here).  Key issues raised at the hearing included whether a promised utility doctrine
Deeth Williams Wall http://www.dww.com/articles/supreme-court-of-canada-hears-astrazeneca%E2%80%99s-nexium-appeal-on-promised-utility-doctrine

Canada Introduces Bill C-30 to Implement CETA: Implications for IP Rights Canada Introduces Bill C-30 to Implement CETA: Implications for IP Rights

Intellectual Property
November 16, 2016November 16, 20162016-11-16
On October 31, 2016, the day after Canada and the European Union (EU) officially signed the Comprehensive Economic and Trade Agreement (CETA), the Canadian government tabled Bill C-30 entitled “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”, outlining measures implement CETA.  Bill C-30 will impact trademark law and pharmaceutical pat
Deeth Williams Wall http://www.dww.com/articles/canada-introduces-bill-c30-to-implement-ceta-implications-for-ip-rights

Canada’s Federal Court Dismisses Patent Infringement Action in a Summary Trial Canada’s Federal Court Dismisses Patent Infringement Action in a Summary Trial

Patent
November 2, 2016November 2, 20162016-11-02
In Cascade Corporation v Kinshofer GmbH, 2016 FC 1117 (October 6, 2016), Justice Southcott of the Federal Court dismissed a patent infringement action brought by Cascade Corporation against Kinshofer Gmbh and its subsidiary concerning Cascade’s Canadian Patent Number 2,587,065 and Kinshofer’s X-LOCK coupler.
Deeth Williams Wall http://www.dww.com/articles/canada%E2%80%99s-federal-court-dismisses-patent-infringement-action-a-summary-trial

Assignment of Patent not Prevented by Non-assignability of Exclusive Licence to the Patent Assignment of Patent not Prevented by Non-assignability of Exclusive Licence to the Patent

Patent
November 2, 2016November 2, 20162016-11-02
On September 28, 2016, in AU New Haven, LLC and Trelleborg Coated Systems US, Inc v YKK Corporation, the Southern District Court of New York found that in specific circumstances, the owners of a patent have standing to sue licensees for patent infringement when those licensees refuse to provide consent to transfer the licence agreement to a new patent owner.
Deeth Williams Wall http://www.dww.com/articles/assignment-of-patent-not-prevented-by-nonassignability-of-exclusive-licence-to-patent

Movie Pirates Sentenced for More than Four Years Lose Appeal in UK Movie Pirates Sentenced for More than Four Years Lose Appeal in UK

Copyright
November 2, 2016November 2, 20162016-11-02
Last year, on December 15, 2015, five UK defendants received sentences, together totaling seventeen years, for conspiracy to defraud by copying, distributing or making available online infringing copies of such Hollywood films as Skyfall and Argo. Last week a Court dismissed the appeal brought by the two defendants with the longest sentences and upheld the more than four year sentences for each defendant stating that: “Whilst we accept that the sentences passed on these two young men were stiff, we are unpersuaded that they were manifestly excessive.”
Deeth Williams Wall http://www.dww.com/articles/movie-pirates-sentenced-for-more-than-four-years-lose-appeal-uk

First Written Decision of CRTC on Canadian Anti-Spam Legislation Reduces Monetary Penalty by More than 90% First Written Decision of CRTC on Canadian Anti-Spam Legislation Reduces Monetary Penalty by More than 90...

CASL
November 2, 2016November 2, 20162016-11-02
On October 26, 2016, the CRTC released its first written decision under the Act commonly known as the Canadian Anti-Spam Legislation, or “CASL”. The decision involves nine messaging campaigns that took place between July 9 and September 18, 2014, in which Blackstone Learning Corp sent more than 385,000 unsolicited commercial electronic messages.
Deeth Williams Wall http://www.dww.com/articles/first-written-decision-of-crtc-on-canadian-antispam-legislation-reduces-monetary-penalty

US Court of Appeals Considers Copyright Infringement by Material in a Digital Locker US Court of Appeals Considers Copyright Infringement by Material in a Digital Locker

Copyright
November 2, 2016November 2, 20162016-11-02
In October, in the case of Cheryl Smith v Barnesandnoble.com, LLC, the Second Circuit Court of Appeals for the Southern District of New York (SDNY) was faced with a matter that nearly provided direction on copyright infringement where work is stored on cloud servers. However, the infringement issue was evaded when the Court determined that the conduct in question had been authorized.
Deeth Williams Wall http://www.dww.com/articles/us-court-of-appeals-considers-copyright-infringement-by-material-a-digital-locker