E-TIPS

On May 2, 2022, Canada’s privacy regulatory authorities (the Regulators) issued a joint statement calling for a legal framework that clearly establishes the acceptable circumstances for police to use facial recognition technology (FR).

On May 5, 2022, the US District Court for the Southern District of New York (the Court) in Hermes Int’l v Rothschild, S.D.N.Y., No. 1:22-cv-00384, issued a one-page order denying Mason Rothschild’s (the Defendant) motion to dismiss Hermès International and Hermès of Paris, Inc.’s (the Plaintiffs) amended complaint, which alleged that the Defendant’s “MetaBirkins” constituted trademark infringement.

On April 7, 2022, in Angelcare Canada Inc v Munchkin Inc, 2022 FC 507, the Federal Court of Canada (the Court) held that the defendants, Munchkin, Inc. and Munchkin Baby Canada, Ltd (the Defendants) had infringed the Plaintiffs’ patents for a diaper disposal system sold under the Diaper Genie brand.

On April 4, 2022, the Federal Court of Canada (the Court) in Milano Pizza Ltd. v 6034799 Canada Inc., 2022 FC 425, granted the Defendants’ counterclaim in part, ordering the expungement of the Plaintiff’s trademark registration due to non-distinctiveness as a result of insufficient controlled licensing of the trademark.

On April 5, 2022, the Federal Court of Canada (the Court) released its decision in August Image LLC v AirG Inc., 2022 FC 470, dismissing August Image LLC’s (August) claim that it had exclusive rights to license certain photographs of Jennifer Lopez taken by celebrity photographer Joe Pugliese, and that airG Inc. (airG) infringed August’s copyright in the photographs by reproducing them without authorization on airG’s website.

On April 21, 2022, the Office of the Superintendent of Financial Institutions (OSFI) released its inaugural Annual Risk Outlook regarding the risks facing Canada’s financial system and its plans to address such risks.

On March 22, 2022, the Federal Court of Canada (the Court) issued its decision in Advanced Purification Engineering Corporation (APEC Water Systems) v iSpring Water Systems, LLC, 2022 FC 388, granting Advanced Purification Engineering Corporation’s (APEC) application to strike iSpring Water Systems, LLC’s (iSpring) APEC WATER trademark (Registration No. TMA969,157) from the register. The Court found that iSpring was not entitled to register the trademark, the trademark was not distinctive, iSpring had abandoned the trademark, and iSpring’s trademark application contained a material misstatement.

On April 23, 2022, the European Parliament and Council reached a provisional political agreement on the Digital Services Act (DSA). Based on the principle that what is illegal offline should be illegal online, the DSA imposes digital regulations with the goal of stopping the spread of illegal content and ensuring the protection of users’ rights.

The Canadian Intellectual Property Office (CIPO) has recently started to conduct “pre-examination” of Canadian trademark applications awaiting examination. CIPO now subjects pending unexamined trademark applications to an automated analysis restricted to the description of goods and services.

In a recent decision of the Ontario Court of Justice (the Court) in R. v Vachon-Desjardins, 2022 ONCJ 43, the Court sentenced the defendant to seven years in prison for his criminal activities involving ransomware attacks using malware in association with the NetWalker group and ordered restitution payments to victims of these ransomware attacks. This case is one of the first judgements of its kind in Canada.

On March 9, 2022, the United States Securities and Exchange Commission (SEC) announced proposed rules that will mandate public companies to comply with a series of disclosure requirements relating to their response to cybersecurity incidents and management of cyber risks.

As a follow-up to our earlier E-TIPS® article on Bill 88, on April 11, 2022, Bill 88, Working for Workers Act, 2022 received Royal Assent. As a result, Ontario is the first province to require employers to disclose its electronic monitoring practices to employees.

In a recent decision of the Federal Court of Canada (the Court) in Blyth Cowbells Brewing Inc. v Bellwoods Brewery Inc., 2022 FC 248, the Court dismissed an appeal from a decision of the Trademarks Opposition Board (TMOB), in which the TMOB refused a trademark application for a Cowbell Mark on the basis of confusion with a registered Bell Design for brewery goods and services.

On March 1, 2022, the Ontario Divisional Court (the Court) issued its decision in Simpson v Facebook, Inc., 2022 ONSC 1284, dismissing an appeal from an order denying certification of a class proceeding against Facebook, Inc. and Facebook Canada LTD. (collectively, Facebook). The proposed class proceeding relates to a privacy incident in which the personal information of Facebook users was improperly shared with Cambridge Analytica Group (Cambridge Analytica).

On February 28, 2022, the Federal Court of Canada (the Court) issued its decision in Wi-Lan Inc. v Apple Canada Inc., 2022 FC 276, dismissing Apple Canada Inc.’s and Apple Inc.’s (collectively, Apple) motion to bifurcate the trial in a patent infringement action.

On March 1, 2022, the Office of the Information & Privacy Commissioner for British Columbia (OIPC) in Conservative Party of Canada (Re), 2022 BCIPC 13, found that British Columbia’s Personal Information Protection Act (PIPA) applies to federal political parties.

On March 25, 2022, the European Commission (EC) and the United States (US) announced reaching a new deal in principle on cross-border data flows. The new deal is aimed to establish a legal mechanism, referred to as the Trans-Atlantic Data Privacy Framework, for European Union (EU) personal data transfers to the US. It is intended to replace the EU-US Privacy Shield invalidated by the Court of Justice of the European Union in July 2020, as previously reported by the E-TIPS® Newsletter here.

On December 22, 2021, the Federal Court of Canada (the Court) in Google LLC v Sonos, Inc., 2021 FC 1462 (released earlier this month), dismissed Sonos, Inc.’s (Sonos) motion for summary judgment that relied on a voluntary dismissal of a parallel patent infringement action in the United States (US). The Court held that Sonos had failed to establish that there was no genuine issue for trial in Canada.

On February 28, 2022, the European Committee of the Regions (ECR) published its recommendations for amendments to the European Commission’s proposal (the Draft Regulation) for a regulation laying down harmonised rules on artificial intelligence (AI).

On February 22, 2022, the Federal Court of Canada (the Court) issued its decision in Nia Wine Group Co., Ltd. v North 42 Degrees Estate Winery Inc., 2022 FC 241, in which it held that “place of origin” under section 12(1)(b) of the Trademarks Act (the Act) can include a line of latitude.