On February 18, 2016, the Canadian Federal Court released its decision in Specialty Software Inc v BEWATEC Kommunikationstechnik GmbH, 2016 FC 223, which deals with trade-marks registered for use in connection with cloud-based software (sometimes called software-as-a-service).
Deeth Williams Wallhttp://www.dww.com/articles/federal-court-comments-on-trademark-registrations-for-cloudbased-software
On March 21, 2016, Barnes J of the Canadian Federal Court upheld a Prothonotary’s decision allowing Gilead’s quia timet infringement action against Teva regarding its tenofovir disoproxil (TDF) products (Gilead’s TRUVADA®, ATRIPLA® and VIREAD®) in Gilead Sciences, Inc v Teva Canada Limited, 2016 FC 336, affirming 2016 FC 31.
Deeth Williams Wallhttp://www.dww.com/articles/strong-possibility-of-future-infringement-satisfies-imminence-requirement-gilead%E2%80%99s-quia
On April 8, 2016, in Google Inc v James M Hood, III, Attorney General of the State of Mississippi, No 15-60205, the United States Court of Appeals of the Fifth Circuit vacated the District Court’s preliminary injunction which was granted in favour of Google. The injunction had prevented the Mississippi Attorney General (AG) from enforcing a subpoena over Google’s search practices.
Deeth Williams Wallhttp://www.dww.com/articles/us-appeals-court-rules-for-mississippi-attorney-general-over-subpoena-of-google%E2%80%99s-search
On March 31, 2016, the Competition Bureau (Bureau) released further updated Intellectual Property Enforcement Guidelines (IPEGs) (Announcement) following an extensive public consultation process held in 2015. The updated IPEGs provide clarification on the Bureau’s approach to conducting investigations of alleged anti-competitive activities that relate to intellectual property.
Deeth Williams Wallhttp://www.dww.com/articles/canada%E2%80%99s-competition-bureau-releases-updated-ip-enforcement-guidelines
On April 1, 2014, in Allergan Inc v Apotex Inc, 2016 FC 344, the Federal Court dismissed Allergan’s application for a prohibition order brought under the Patented Medicines (Notice of Compliance) Regulations, on the basis that Allergan failed to demonstrate utility of its Canadian Patent Number 2,307,632 (the ‘632 Patent).
Deeth Williams Wallhttp://www.dww.com/articles/federal-court-prefers-blinded-expert-witness%E2%80%99s-testimony-allergan-v-apotex-inc
On March 15, 2016, Canada’s Federal Court of Appeal (FCA) released its decision Michaels v Michaels Stores Procurement Company, Inc, 2016 FCA 88 (Michaels), which dismissed multiple grounds of appeal from a default judgment that, among other things, found the plaintiffs’ trade-mark had been infringed and ordered delivery up of a domain name.
Deeth Williams Wallhttp://www.dww.com/articles/court-of-appeal-upholds-federal-court%E2%80%99s-order-for-transfer-of-domain-name
On March 21, 2016, the Unites States Supreme Court (USSC) granted a petition by Samsung Electronics Co. (Samsung) to hear an appeal from a particular aspect of the damages awarded against Samsung in the widely reported patent infringement finding against Samsung and in favour of Apple Inc (Apple). The USSC will hear argument on the following question: where a design patent relating to only a component of a product is infringed, should an award of infringer profits be limited to those profits attributable to that particular component?
Deeth Williams Wallhttp://www.dww.com/articles/united-states-supreme-court-agrees-to-hear-applesamsung-design-patent-related-damages
The Digital Privacy Act (DPA), which received Royal Assent on June 18, 2015, amended the Personal Information Protection and Electronic Documents Act (PIPEDA) in a number of ways. Among the changes is the establishment of federal data breach notification requirements. Organizations that experience a data breach that would create a reasonable belief of a real risk of significant harm to an individual will be required to:
Deeth Williams Wallhttp://www.dww.com/articles/government-of-canada-seeks-consultation-on-data-breach-notification-regulations
Advocates for tax relief for investment in intellectual property have won a major victory as Québec became the first province to announce implementation of a “patent box” incentive. A “patent box” is a fiscal incentive that allows a company to identify revenue that comes from its patents on its corporate tax return (by checking the "patent box"). This income is then taxed at a lower rate.
Deeth Williams Wallhttp://www.dww.com/articles/quebec-opening-patent-box-tax-relief-for-intellectual-property-investment
On March 16, 2016, Manson J of the Federal Court of Canada issued his decision in Uponor AB v Heatlink Group Inc et al, 2016 FC 320, holding that a majority of the claims in CA Patent No. 2,232,376 (376 Patent), owned by the plaintiff, are invalid for inutility in fact, insufficiency, overbreadth, anticipation, and obviousness, but that Heatlink Group Inc and Pexcor Manufacturing Company Inc (Pexcor) infringed the remaining claims.
Deeth Williams Wallhttp://www.dww.com/articles/federal-court-holds-improper-priority-claim-not-a-material-misrepresentation
On March 14, 2016, the Superior Court of Québec (Court) released its decision in Diesel s.p.a c Benisti Import-Export inc, 2016 QCCS 1085, ruling (among other things) that Benisti Import-Export Inc. (operating under the name “Point Zero”) and its president Maurice Benisti (Benisti) had infringed the trade-mark rights of Diesel s.p.a. (Diesel) to a label design used by Diesel on the pocket of its brand of jeans.
Deeth Williams Wallhttp://www.dww.com/articles/point-zero-denim-and-president-liable-for-trademark-infringement-and-passingoff
On February 18, 2016, the Canadian Federal Court allowed an appeal from a decision of the Registrar of Trade-marks in Specialty Software Inc v Bewatec Kommunikationstechnik GmbH, 2016 FC 223. The registration at issue was owned by Specialty Software Inc (SSI). SSI’s trade-mark was registered for the goods “software computer programs.” The evidence showed that SSI’s assignee now offered the software computer programs through a website, which the requester argued was use as a “service.”
Deeth Williams Wallhttp://www.dww.com/articles/federal-court-considers-effects-of-technological-change-on-trademark-registration-for
On March 10, 2016, in In re: Ray Smith, Amanda Tears Smith, 2015-1664, the US Court of Appeals for the Federal Circuit (CAFC) affirmed the United States Patent Trial and Appeal Board’s decision that a method of conducting a wagering game is a non-patentable “abstract idea.”
Deeth Williams Wallhttp://www.dww.com/articles/us-federal-circuit-finds-a-new-card-game-not-patenteligible-subject-matter
On March 8, 2016, Manson J of the Federal Court granted an application by the Canadian Standards Association (CSA) seeking relief relating to an alleged copyright infringement by the Respondents in Canada Standard Association v P S Knight Co Ltd, 2016 FC 294. The Respondents did not deny that their Knight Code is a substantial copy of the 2015 CSA Code. However, they asserted that no copyright subsisted in the 2015 CSA Code and raised the defence of a licence and fair dealing. Manson J rejected a
Deeth Williams Wallhttp://www.dww.com/articles/canadian-federal-court-finds-copyright-subsists-csa-code
On March 10, 2016, the Supreme Court of Canada (SCC) allowed AstraZeneca’s application to appeal from the Federal Court of Appeal (FCA) decision in AstraZeneca Canada Inc v Apotex Inc, 2015 FCA 158 (SCC Case No. 36654).
Deeth Williams Wallhttp://www.dww.com/articles/scc-grants-leave-to-consider-patent-%E2%80%9Cpromise-doctrine%E2%80%9D
In a statement to the House of Commons Standing Committee on Access to Information, Privacy and Ethics (the Committee), the Privacy Commissioner of Canada, Daniel Therrien, recommended sweeping changes to the Privacy Act.
Deeth Williams Wallhttp://www.dww.com/articles/privacy-commissioner-recommends-amendments-to-privacy-act
On April 4, 2016, the Canadian Food Inspection Agency (CFIA) will begin its full enforcement of the new halal labelling and advertising certification requirements, following a two-year transition period of the amended Food and Drug Regulations. The Regulation came after halal food consumers had expressed concerns about the difficulty of making informed purchase decisions.
Deeth Williams Wallhttp://www.dww.com/articles/new-halal-claims-requirements-coming-into-force-april-4-2016