E-TIPS

On July 21, 2021, the Federal Court of Canada (the Court) issued its decision in Seismotech Safety Systems Inc. v Forootan, 2021 FC 773, refusing to grant Seismotech Safety Systems Inc. (Seismotech) an ex parte anti-suit injunction to prevent Mr. Iradj Forootan from starting or continuing litigation in respect of six Canadian patents in any other court. The Court noted that an anti-suit injunction is an extraordinary and discretionary remedy that should only be granted rarely, given its impact on judicial comity.

On July 12, 2021, the Federal Court of Canada (the Court) in Toronto Regional Real Estate Board v R E Stats Inc. (Redatum), 2021 FC 735, granted the Toronto Regional Real Estate Board’s (TRREB) motion for default judgment for copyright infringement relating to the TRREB Multiple Listing Service and related online systems (TRREB MLS® System), awarding $50,000 in damages.

On August 10, 2021, the Federal Court of Canada (the Court) issued its decision in Bell Canada v L3D Distributing Inc., 2021 FC 832, in which it granted the plaintiffs’ motion for default judgement, awarding over $29 million in statutory damages for copyright infringement relating to pre-loaded set-top boxes and internet protocol television (IPTV) services, and finding the defendants knowingly induced infringement. This decision appears to be the first time the Court has applied the common law inducement test in the context of copyright infringement.

On August 13, 2021, the Office of the Superintendent of Financial Institutions (OSFI) issued an updated Technology and Cyber Security Incident Reporting Advisory (Advisory) governing the requirements for federally regulated financial institutions (FRFIs) in Canada to report technology and cyber security incidents to OFSI. OSFI is an independent federal government agency that regulates and supervises FRFIs, including all banks, insurance companies and federally incorporated or registered trust and loan companies.

On July 28, 2021, the Federal Court of Appeal of Canada (the Court) issued a decision in the case of Seedlings Life Science Ventures, LLC v. Pfizer Canada ULC, 2021 FCA 154. In this appeal, Seedlings Life Science Ventures, LLC (Seedlings) challenged the Federal Court’s finding that the claims at issue of Seedling’s patent were invalid for overbreadth.

On August 12, 2021, Canada’s Federal Court of Appeal (FCA) in Bauer Hockey Ltd. v Sport Maska Inc. (CCM Hockey), 2021 FCA 166, upheld the Federal Court’s (FC) finding that the claims in issue regarding Bauer Hockey Ltd.’s (Bauer) patent were invalid for obviousness, as previously reported by the E-TIPS® Newsletter here.

Significant delays in examination of Canadian trademark applications continue, both for reasons related and unrelated to the pandemic. Backlogs in first examination of most applications are getting worse, with first examination ranging from 16-32 months from filing or more. It is like watching a snail pause to catch its breath.

On July 29, 2021, the Supreme Court of Canada (SCC) in Grant Thornton LLP v New Brunswick, 2021 SCC 31, clarified that a claim is discovered, and the limitation period begins to run, when the plaintiff has actual or constructive knowledge “of the material facts upon which a plausible inference of liability on the defendant’s part can be drawn”.

On July 30, 2021, in York University v Canadian Copyright Licensing Agency (Access Copyright), 2021 SCC 32, the Supreme Court of Canada (SCC) unanimously dismissed an appeal of the decision of the Federal Court of Appeal (as previously reported by the E-TIPS® Newsletter here), upholding the finding that the tariff in question was not mandatory, nor enforceable, against York University (York) since York chose not to be bound by the license.

On August 4, 2021, the Ontario Superior Court of Justice (the Court) issued its decision in Del Giudice v Thompson, 2021 ONSC 5379, striking the plaintiffs’ Fresh as Amended Statement of Claim (the Claim) and dismissing its motion to certify a class action claim for data misappropriation and misuse stemming from the 2019 data breach of personal information from Capital One.

On July 15, 2021, in Symantec and Veritas Technologies v Det Norske Veritas, 2021 TMOB 143, the Trademarks Opposition Board (TMOB) of Canada rejected an opposition to the trademark application for DET NORSKE VERITAS for software based on confusion with the opponent’s VERITAS trademark for software.

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.