In Arctic Cat Inc v Bombardier Recreational Products Inc, 2016 FC 1047 (September 16, 2016), Roy J of the Federal Court held that upon a proper claim construction, the asserted claims of Canadian Patent No 2,322,738 (the 738 Patent) owned by Arctic Cat Inc (Arctic Cat) were not infringed by Bombardier Recreational Products Inc (BRP).
Deeth Williams Wallhttp://www.dww.com/articles/federal-court-confirms-availability-of-gillette-defence-based-on-obviousness
Computer-implemented inventions continue to face challenges to patent protection in Canada as illustrated in two recent Patent Appeal Board (PAB) decisions discussed here.
1. PAB 1407 re Canadian Patent Application No. 2,798,566
Deeth Williams Wallhttp://www.dww.com/articles/canada%E2%80%99s-patent-appeal-board-rejects-software-inventions-as-nonstatutory-subject-matter
Once a patent is issued, corrections involving changes to the records of the Patent Office relating to inventorship and ownership must be made by way of an application at the Federal Court (FC) pursuant to section 52 of Canada’s Patent Act (the Act). In Qualcomm Incorporated v Canada (Commissioner of Patents), the FC held that the recordal of replacement documents is beyond the scope of section 52 (2016 FC 1092).
Deeth Williams Wallhttp://www.dww.com/articles/federal-court-refuses-to-record-replacement-documents-under-s52-of-patent-act
In Times Group Corporation v Time Development Group Inc (2016 FC 1075), the Federal Court (FC) granted the applicant, Times Group Corporation and Times Developments Inc (collectively, Times), declaratory and injunctive relief relating to the use of the trade name TIME DEVELOPMENT GROUP by its competitor, Time Development Group Inc and Time Development Inc (collectively, TDG). Both parties were property developers targeting the Chinese Canadian community.
Deeth Williams Wallhttp://www.dww.com/articles/federal-court-finds-use-of-times-by-competing-property-developers-confusing
In Bell Canada v Cogeco Cable Canada (2016 ONSC 6044), the Ontario Superior Court granted an interlocutory injunction against Cogeco Cable Canada GP Inc (Cogeco) for its use of the phrase “the best Internet experience in your neighbourhood” on advertisements for Cogeco’s cable services. Bell Canada alleged that the phrase constituted a false and misleading representation and was prohibited under the Competition Act and the Trade-marks Act.
Deeth Williams Wallhttp://www.dww.com/articles/ontario-superior-court-grants-interlocutory-injunction-against-use-of-phrase-%E2%80%9C-best
As previously reported by E-TIPS® Newsletter, the Office of the Privacy Commissioner of Canada (OPC) held a public consultation to review the current consent model under Canada’s Personal Information Protection and Electronics Documents Act (PIEPDA). The public consultation requested comments on four questions:
Deeth Williams Wallhttp://www.dww.com/articles/privacy-commissioner-of-canada-publishes-consent-model-submissions
The United States Patent and Trademark Office (USPTO) has proposed patent fee adjustments in a notice of proposed rulemaking published on September 30, 2016. Comments on the fee adjustments must be received on or before December 2, 2016.
The proposal includes:
Deeth Williams Wallhttp://www.dww.com/articles/uspto-proposes-new-fees-large-increases-for-patent-application-and-ptab-trial-fees
In Royal Conservatory of Music et al v Macintosh (Novus Via Music Group Inc.) et al, 2016 FC 929, the Royal Conservatory and its publisher (the Applicants) sought damages for infringement of 21 musical works that were included in a series of instructional piano books published by Clarke MacIntosh doing business as Novus Via Music Group Inc. (Novus) and Conservatory Canada (the Respondents).
Deeth Williams Wallhttp://www.dww.com/articles/federal-court-awards-lowest-per-work-damages-for-commercial-copyright-infringement
In its brief September 15, 2016 decision in Teva Canada Limited v Novartis Pharmaceuticals Canada Inc, 2016 FCA 230, the Federal Court of Appeal (FCA) affirmed the Federal Court’s construction of the promise made in Novartis’ deferasirox EXJADE® patent (2015 FC 770,
Deeth Williams Wallhttp://www.dww.com/articles/federal-court-of-appeal-affirms-different-claims-can-have-different-utility-for-same
A dispute between two Toronto store owners in the Queen St. West neighbourhood has resulted in a passing-off action.
The plaintiff, Kristen Voisey, owner of BYOB, filed the passing-off action in the Ontario Superior Court in 2014, claiming that her neighbour, Organic Boutique, was presenting its goods in a manner that was confusing to consumers.
In the lawsuit, Voisey alleges that Organic Boutique placed signs with “Y.O.B. Inc.” and also placed press articles about BYOB in the window of Organic Boutique’s store, creating confusion.
Deeth Williams Wallhttp://www.dww.com/articles/toronto-cocktail-retailers-dispute-storefront-commonalities-passingoff-action
In a News Release dated September 13, 2016, the Competition Bureau (the Bureau) announced that Comwave Networks Inc. (Comwave) has agreed to pay an administrative penalty of $300,000 for making deceptive marketing claims about the costs and limitations of their Internet and home phone services.
Deeth Williams Wallhttp://www.dww.com/articles/comwave-fined-300000-for-making-misleading-advertising-claims-to-public
On July 12, 2016, the European Commission reported the formal adoption of the EU-US Privacy Shield Framework (Privacy Shield), which governs the transfer of data between the EU and the US. As previously reported in E-TIPS® newsletter, the new privacy framework was announced earlier this year.
Deeth Williams Wallhttp://www.dww.com/articles/euus-privacy-shield-adopted-by-european-commission-and-us-department-of-commerce
In Trader Joe’s Company v Hallatt, the US Court of Appeals for the Ninth Circuit reversed the dismissal of Trader Joe’s claims under the Lanham Act. The District Court dismissed these claims for lack of subject matter jurisdiction, as the alleged trademark infringement took place in Canada.
Deeth Williams Wallhttp://www.dww.com/articles/us-court-allows-trader-joe%E2%80%99s-lanham-act-claim-to-proceed-against-canadian-business
On September 6, 2016, Canada’s Federal Court of Appeal (FCA) issued its decision dismissing the appeal of Nova Chemicals Corporation from Justice O’Keefe’s decision finding Dow Chemical Company’s Canadian Patent No.
Deeth Williams Wallhttp://www.dww.com/articles/canada%E2%80%99s-federal-court-of-appeal-comments-on-standard-of-review-for-claim-construction
On September 1, 2016, the Canadian Radio-television and Telecommunications Commission (CRTC) issued a statement stating that Kellogg Canada Inc had voluntarily entered into an undertaking to fully and completely resolve all outstanding issues with respect to Kellogg’s or its subsidiaries’ alleged violation of paragraph 6(1)(a) of Canada’s Anti-Spam Legislation (CASL).
Deeth Williams Wallhttp://www.dww.com/articles/kellogg-undertakes-to-pay-60000-for-alleged-violation-of-casl
We previously reported that Justice Brown of Canada’s Federal Court had allowed a prohibition application by Bayer Inc against Fresenius Kabi Canada Ltd concerning Fresenius’s generic moxifloxacin hydrochloride (HCl) injection (Bayer’s AVELOX I.V.®) and Bayer’s Canadian Patent No.
Deeth Williams Wallhttp://www.dww.com/articles/canada%E2%80%99s-federal-court-refuses-to-reconsider-issuance-of-prohibition-order-due-to
Pharrell Williams, Robin Thicke, and T.I. are getting some major support from fellow musicians in their appeal over the hit song "Blurred Lines”. More than 200 musicians, including composer Hans Zimmer, crooner R. Kelly, and members of such bands as the Go-Go's, the Black Crowes, Linkin Park, and Three 6 Mafia, filed an amicus brief with the US Ninth Circuit Court of Appeals last month in support of Williams to overturn the copyright infringement judgment, which carried one of the largest awards in music copyright history.
Deeth Williams Wallhttp://www.dww.com/articles/hundreds-of-musicians-show-their-support-for-pharrell-williams-and-robin-thicke-blurred
Patent assignments registered in the United States Patent and Trademark Office (USPTO) are now available online using the USPTO assignment search tool. After locating a patent or application by conducting a search using the usual parameters (such as Patent Number, Assignor Name and Assignee Name), a PDF copy of the assignment can be viewed under the “Conveyance” heading or wherever the small rectangular PDF icon is displayed.
Deeth Williams Wallhttp://www.dww.com/articles/uspto-now-publishing-patent-assignments-online
In Wenger SA v Travel Way Group International Inc (2016 FC 347), the Federal Court dismissed an application by Wenger S.A. (Wenger) alleging passing off and infringement of its Cross Logo trade-mark by a competing luggage manufacturer (TWGI).
Wenger’s mark and the marks registered and used by TWGI are illustrated below:
Deeth Williams Wallhttp://www.dww.com/articles/federal-court-dismisses-trademark-infringement-application-by-swiss-army-knife-company