E-TIPS

On July 30 2021, the Federal Court of Australia released a landmark decision in Thaler v Commissioner of Patents [2021] FCA 879, finding that artificial intelligence can be an inventor for the purposes of the Australian Patents Act 1990 (Cth). The historic decision came just days after South Africa became the first country to defy the status quo and award a patent recognising an AI as an inventor (ZA2021/03242).

In a recent decision in Tokai of Canada Ltd v Kingsford Products Company, LLC, 2021 FC 782, involving the issue of whether two trademarks were confusing, the Federal Court of Canada (the Court) rejected the appellant’s survey evidence consisting of an online survey, finding it deficient, in that it failed to simulate a consumer’s imperfect recollection at the time when they encounter the products and the appellant’s trademark in the marketplace.

On July 12, 2021, in Pourshian v Walt Disney Company, 2021 ONSC 4840, the Ontario Superior Court of Justice (the Court) partially allowed an appeal by Mr. Damon Pourshian (Pourshian) of a decision that stayed his claim for copyright infringement against multiple Walt Disney and Pixar companies (the defendants) due to lack of court jurisdiction.

On July 16, 2021, the Government of Canada (the Government) launched a public consultation on a modern copyright framework for artificial intelligence (AI) and the Internet of Things (IoT) with a view to informing policy development and ensuring that Canada’s copyright framework reflects the evolving digital world. Along with the consultation, the Government published a consultation paper that (i) raises the challenges to the copyright framework around AI and IoT; (ii) presents possible approaches to address them; and (iii) outlines questions to help guide the development of policy measures.

On July 20, 2021, the Federal Court of Canada (the Court), in Canadian Standards Association v PS Knight Co Ltd and Gordon Knight, 2021 FC 770, found P.S. Knight Co. Ltd., Mr. Gordon Knight and Knight Americas (collectively, the Knight Parties) in contempt of court for failing to abide by, or aiding and abetting another Knight Party to contravene, an amended judgement and a supplemental judgement in 2016 FC 294 (previously reported by E-TIPS® Newsletter here) and 2016 FC 387 (collectively, the Judgement).

On July 8, 2021, the Federal Court of Canada (the Court) in Reference re Subsection 18.3(1) of the Federal Courts Act, 2021 FC 723, found that Google’s search engine service operates in the course of commercial activities within the meaning of the Personal Information Protection and Electronic Documents Act (PIPEDA), and that such service does not fall under PIPEDA’s journalistic exemption.

On July 7, 2021, the Court of Justice for the European Union (the CJEU), in Ardagh Metal Beverage Holdings GmbH & Co. KG v European Union Intellectual Property Office (T 668/19), dismissed a trademark application for the registration of a sound mark because it is not distinctive. This case is the court’s first ruling on an application for registration of a sound mark submitted in audio format.

On July 3, 2021, the Government of Canada (the Government) published proposed amendments to the Patent Rules for public consultation. According to the regulatory impact analysis statement, the proposed amendments are part of the implementation of Canada’s patent term adjustment (PTA) obligation under the Canada-United States-Mexico Agreement (CUSMA).

On June 22, 2021, the Federal Court (the Court) in Kaira District Co-operative Milk Producers’ Union Limited v AMUL Canada, 2021 FC 636, granted Kaira District Co-operative Milk Producers’ Union Limited (Kaira) and Gujarat Cooperative Milk Marketing Federation Ltd. (Gujarat) (collectively, the Plaintiffs) ex parte motion for default judgement for trademark and copyright infringement.

On June 17, 2021, the Ontario Ministry of Government and Consumer Services (MGCS) announced the launch of public consultation on the MGCS’ white paper, which outlines proposals for reforming Ontario’s privacy protection framework.

On June 16, 2021, Canada’s Federal Court of Appeal (FCA) in ViiV Healthcare Company v Gilead Sciences Canada, Inc., 2021 FCA 122, upheld the Federal Court’s (FC) summary judgment dismissing patent infringement action brought by ViiV Healthcare Company (ViiV) against Gilead Sciences Canada, Inc. (Gilead), as previously reported by the E-TIPS® Newsletter here. The FCA also dismissed ViiV’s appeal from three interlocutory orders, including ViiV’s motion to adjourn or quash Gilead’s motion for summary trial.

On June 25, 2021, Health Canada announced proposed amendments to the Natural Health Products Regulations (the Proposed Regulations) in an effort to make natural health product (NHP) labels more clear, legible and easier to understand for consumers, and to align with rules already established for non-prescription drugs.

On June 11, 2021, the Federal Court of Canada (the Court) in Sadhu Singh Hamdard Trust v Navsun Holdings Ltd, 2021 FC 602, found Navsun Holdings Ltd (Navsun) liable for passing off in respect of Hamdard Trust’s (Trust) trademark and awarded Trust $10,000 in compensatory damages for the period July 2004 to September 2009. The dispute was lengthy and was previously dealt with in 2018 FC 42 and 2019 FCA 10 (as reported by the E-TIPS® Newsletter here and here, respectively). The present decision is a second redetermination of the issues between the parties.

On June 9, 2021, the Federal Court of Appeal of Canada (FCA) in Sunovion Pharmaceuticals Canada Inc. v Taro Pharmaceuticals Inc., 2021 FCA 113, dismissed the appeal of Sunovion Pharmaceuticals Canada (Sunovion, or the ‘first person’) from the Federal Court (FC) decision, 2021 FC 37, allowing Taro Pharmaceuticals Inc. (Taro, or the ‘second person’) to amend its statement of defence in the context of an action brought under the Patented Medicines (Notice of Compliance) Regulations (the Regulations).

On June 9, 2021, the Ontario Superior Court of Justice issued its decision in Owsianik v Equifax Canada Co, 2021 ONSC 4112, where the majority allowed an appeal arising from the plaintiff’s successful class certification motion, finding that entities that collect and store private information cannot be liable for intrusion upon seclusion by failing to prevent the intrusion of another.

On June 10, 2021, the Federal Court of Canada (the Court) issued its decision in Subway IP LLC v Budway, Cannabis & Wellness Store, 2021 FC 583, where it granted Subway IP LLC (Subway) damages for infringement, passing off, and depreciation of goodwill of its registered trademarks.

On June 10, 2021, the Office of the Privacy Commissioner of Canada (OPC) issued a statement following its investigation into the RCMP’s use of Clearview AI’s facial recognition technology (FRT), reporting that the RCMP contravened the Privacy Act (the Act) when it collected information from Clearview AI.

On June 17, 2021, the Federal Court of Canada (the Court) issued its decision in H-D U.S.A., LLC v Varzari, 2021 FC 620, in which Justice McHaffie found in favour of H-D USA, LLC and Harley-Davidson Canada LP (collectively, the Applicants) for trademark infringement, passing off and depreciation of goodwill in relation to custom-built electric bicycles sold by Mr. Varzari.

On May 26, 2021, the Federal Court of Appeal of Canada (FCA) issued its decision in Teksavvy Solutions Inc. v Bell Media Inc., 2021 FCA 100, upholding the decision of the Federal Court (FC) to issue Canada’s first website-blocking order, which requires Internet service providers (ISPs) to block access to certain websites hosting unauthorized content.

On May 27, 2021, the Federal Court of Canada (Court) issued its decision in Winkler v. Hendley, 2021 FC 498, summarily dismissing an action for copyright infringement and reaffirming the long standing principle that there is no copyright in facts. This principle applies in cases where the author’s work is plausibly represented as nonfictional and historically factual, even if it may subsequently be shown as untrue.