Federal Court Considers Motion to Stay Prosecution and Issuance of Canadian Patent Applications Federal Court Considers Motion to Stay Prosecution and Issuance of Canadian Patent Applications

Patent
April 17, 2019April 17, 20192019-04-17
On February 4, 2019, the Federal Court (Court) issued a decision in Canadian National Railway Company v BNSF Railway Company, 2019 FC 142, considering a motion by BNSF Railway Company (BNSF) for an order to stay the prosecution and issuance by the Canadian Patent Office of several pending patent applications.
Deeth Williams Wall https://www.dww.com/articles/federal-court-considers-motion-to-stay-prosecution-and-issuance-of-canadian-patent

Federal Court Dismisses Application to Expunge Upper Crust’s Trademark Federal Court Dismisses Application to Expunge Upper Crust’s Trademark

Trademark
April 17, 2019April 17, 20192019-04-17
On April 2, 2019, in Bon Appetit Danish, Inc v 2168587 Ontario Ltd, 2019 FC 396, the Federal Court (Court) dismissed an application brought by Bon Appetit Danish, Inc and Bon Appetit Distribution Inc (collectively, Bon Appetit) to expunge 2168587 Ontario Ltd’s (Upper Crust) registered trademark BON APPÉ GOURMET & Design. Both parties are manufacturers and distributors of packaged baked goods generally sold in convenience stores.
Deeth Williams Wall https://www.dww.com/articles/federal-court-dismisses-application-to-expunge-upper-crust%E2%80%99s-trademark

Federal Court Considers Validity and Infringement of Canadian Patent 2,491,858 Federal Court Considers Validity and Infringement of Canadian Patent 2,491,858

Patent Litigation
April 3, 2019April 3, 20192019-04-03
On March 6, 2019, the Federal Court (Court) issued a decision in Tensar Technologies Ltd v Enviro-Pro Geosynthetics Ltd, 2019 FC 277, considering the validity and infringement of Canadian Patent 2,491,858 (the ‘858 Patent), owned by Tensar Technologies, Limited (Tensar).  The Court found that the claims at issue were valid, but not infringed by Enviro-Pro Geosynthetics Ltd (Enviro-Pro). 
Deeth Williams Wall https://www.dww.com/articles/federal-court-considers-validity-and-infringement-of-canadian-patent-2491858

Competition Bureau Finalizes IP Enforcement Guidelines Competition Bureau Finalizes IP Enforcement Guidelines

Intellectual Property
April 3, 2019April 3, 20192019-04-03
On March 13, 2019, the Competition Bureau (the Bureau) published a final version of its revised Intellectual Property Enforcement Guidelines (IPEGs). The updates largely reflect changes to Canada’s regulations governing early generic pharmaceutical entry and recent jurisprudence, as previously reported in E-TIPS® Newsletter here.
Deeth Williams Wall https://www.dww.com/articles/competition-bureau-finalizes-ip-enforcement-guidelines

Update: Supreme Court Denies Leave to Appeal in Dispute Over Breach of IT Services Subcontract Update: Supreme Court Denies Leave to Appeal in Dispute Over Breach of IT Services Subcontract

Technology Contracting
April 3, 2019April 3, 20192019-04-10
On March 21, 2019, the Supreme Court of Canada dismissed an application, brought by Sapient Canada Inc (Sapient), for leave to appeal in Atos IT Solutions v Sapient Canada Inc, 2018 ONCA 374.
Deeth Williams Wall https://www.dww.com/articles/update-supreme-court-denies-leave-to-appeal-dispute-over-breach-of-it-services-subcontract

EU Regulators Hits Google With Another Multi-Billion Dollar Fine EU Regulators Hits Google With Another Multi-Billion Dollar Fine

Information Technology
April 3, 2019April 3, 20192019-04-03
On March 20, 2019, the European Union Competition Commission (Commission) found Google Inc (Google) in breach of antitrust rules for imposing restrictive clauses in contracts with websites that use Google AdSense to prevent Google’s rivals from placing their ads on these sites.  This is the third time that the Commission has found that Google violated EU antitrust laws and laid a €1.49-billion fine on the tech giant as a result.
Deeth Williams Wall https://www.dww.com/articles/eu-regulators-hits-google-another-multibillion-dollar-fine

European Parliament Votes to Pass Controversial Copyright Directive European Parliament Votes to Pass Controversial Copyright Directive

Copyright
April 3, 2019April 3, 20192019-04-03
On March 26, 2019, members of the European Parliament voted to pass the controversial Copyright Directive which will bring significant reforms to how online content is governed. However, the bill which passed by a vote of 348 in favour to 274 against still needs approval from the European Counsel before it becomes law.
Deeth Williams Wall https://www.dww.com/articles/european-parliament-votes-to-pass-controversial-copyright-directive

Federal Court of Appeal Rules that Profit is Not Required to Establish Use in the “Normal Course of Trade” Federal Court of Appeal Rules that Profit is Not Required to Establish Use in the “Normal Course of Trade...

Trademark
April 3, 2019April 3, 20192019-04-03
On March 11, 2019, in Cosmetic Warriors Limited v Riches, McKenzie & Herbert LLP, 2019 FCA 48, the Federal Court of Appeal (FCA) allowed an appeal from a judgment of the Federal Court that struck Cosmetic Warriors Ltd’s trademark LUSH from the register.
Deeth Williams Wall https://www.dww.com/articles/federal-court-of-appeal-rules-profit-not-required-to-establish-use-%E2%80%9Cnormal-course-of-trade

Federal Court Denies Motion on Consent to Grant Protective Order Federal Court Denies Motion on Consent to Grant Protective Order

Patent
March 21, 2019March 21, 20192019-03-21
On March 7, 2019, the Federal Court of Canada (Court) issued its decision in Canadian National Railway Company v BNSF Railway Company, 2019 FC 281, dismissing a motion on consent to issue a proposed protective order.
Deeth Williams Wall https://www.dww.com/articles/federal-court-denies-motion-on-consent-to-grant-protective-order

Apotex Inc v Schering Corp Saga over the Ramipril Drug Continues Apotex Inc v Schering Corp Saga over the Ramipril Drug Continues

Patent
March 21, 2019March 21, 20192019-03-21
On February 27, 2019, in Apotex Inc v Schering Corporation (2019 ONSC 1393), the Ontario Superior Court of Justice granted Schering and Sanofi-Aventis (collectively “Sanofi”) leave to bring a motion to strike Apotex’s pleadings dealing with the validity of Sanofi’s Canadian Patent No. 1,341,206 (the ’206 Patent).
Deeth Williams Wall https://www.dww.com/articles/apotex-inc-v-schering-corp-saga-over-ramipril-drug-continues

United States Court of Appeals on Inherency United States Court of Appeals on Inherency

Patent
March 21, 2019March 21, 20192019-03-21
On March 8, 2019, the United States Court of Appeals for the Federal Circuit (the Court) issued a decision in Personal Web Technologies, LLC, v Apple, Inc, reversing a decision of the Patent Trial and Appeal Board (Board) concluding that certain claims of U.S. Patent No 7,802,310 (the ’310 Patent) were obvious in view of U.S. Patent No 5,649,196 (Woodhill) and U.S. Patent No 7,359,881 (Stefik).
Deeth Williams Wall https://www.dww.com/articles/united-states-court-of-appeals-on-inherency

Internet of Things Security Bill Introduced in US House and Senate Internet of Things Security Bill Introduced in US House and Senate

Information Technology
March 21, 2019March 21, 20192019-03-21
On March 11, 2019 the Internet of Things Cybersecurity Improvement Act of 2019 (the “Act”), a bill which would require minimum of security standards for any Internet of Things (IoT) devices purchased by the US federal government, was introduced in the US House and Senate.
Deeth Williams Wall https://www.dww.com/articles/internet-of-things-security-bill-introduced-us-house-and-senate

UK House of Lords Releases Report Calling for "Digital Authority" to Regulate Technological World UK House of Lords Releases Report Calling for "Digital Authority" to Regulate Technological World

Information Technology
March 21, 2019March 21, 20192019-03-21
The United Kingdom House of Lords (the “House”) recently released a report suggesting the creation of a "Digital Authority" in an effort to regulate the technological world, most notably online giants.  While the "Digital Authority" is not expected to replace the roles that organizations such as the UK Information Commissioner's Office play in the industry, it aims to collaborate with such organizations and recommend "additional powers" if there are significant problems.
Deeth Williams Wall https://www.dww.com/articles/uk-house-of-lords-releases-report-calling-for-digital-authority-to-regulate-technological

Celebrities to Dismiss & Refile Their Copyright Infringement Claims Against Fortnite Game Maker Celebrities to Dismiss & Refile Their Copyright Infringement Claims Against Fortnite Game Maker

Copyright
March 21, 2019March 21, 20192019-03-21
On March 4, 2019, the United States Supreme Court issued its decision in Fourth Estate Public Benefit Corp v Wall-Street.com, LLC, 586 US (2019) finding that a claim for copyright infringement cannot be filed until after the US Copyright Office has granted registration for the work.
Deeth Williams Wall https://www.dww.com/articles/celebrities-to-dismiss-refile-their-copyright-infringement-claims-against-fortnite-game

US Government Accountability Office Recommends New Privacy Law US Government Accountability Office Recommends New Privacy Law

Privacy
March 6, 2019March 6, 20192019-03-06
On January 15, 2019, the US Government Accountability Office (GAO) released its report recommending that Congress develop comprehensive Internet privacy legislation to better protect consumers.
Deeth Williams Wall https://www.dww.com/articles/us-government-accountability-office-recommends-new-privacy-law

New Jersey Based Shoe Designer Seeks Protection of Green-Soled Shoes New Jersey Based Shoe Designer Seeks Protection of Green-Soled Shoes

Trademark
March 6, 2019March 6, 20192019-03-06
With the recent success of Christian Louboutin enforcing their trademarked red-soled shoes, it seems like other companies are taking their chances on similar protection.  Reginald Bendolph, a shoe company based out of Irvington, New Jersey, recently filed a trademark application on shoes with the sole painted green.   The company cites that their first use of a green sole on shoes dates back to March 2017 in their application. 
Deeth Williams Wall https://www.dww.com/articles/new-jersey-based-shoe-designer-seeks-protection-of-greensoled-shoes

Supreme Court of Newfoundland and Labrador on Confidentiality, Competition and Trade Secrets Supreme Court of Newfoundland and Labrador on Confidentiality, Competition and Trade Secrets

Trade-secret
March 6, 2019March 6, 20192019-03-06
On February 21, 2019, the Supreme Court of Newfoundland and Labrador General Division (Court) issued its decision in Safety First Contracting (1995) Ltd v Murphy, 2019 NLSC 47 finding that Safety First Contracting (1995) Ltd (Safety First) failed to prove its allegations that its former employee, Mr Patrick Murphy (Murphy), breached any obligation of confidentiality and non-competition or that he wrongfully converted trade secrets.
Deeth Williams Wall https://www.dww.com/articles/supreme-court-of-newfoundland-and-labrador-on-confidentiality-competition-and-trade

Privacy Commissioner to Launch Investigation Into Sale of “Anonymized” Health Data Privacy Commissioner to Launch Investigation Into Sale of “Anonymized” Health Data

Privacy
March 6, 2019March 6, 20192019-03-06
On February 20, 2019, the Toronto Star (“Star”) reported that the Office of the Information and Privacy Commissioner of Ontario is launching an investigation into the sale of anonymized health data to IQVIA, a US based health data company.  IQVIA has a data-sharing arrangement with an electronic medical record software company that enables IQVIA to obtain de-identified patient records from primary care practices in the province.
Deeth Williams Wall https://www.dww.com/articles/privacy-commissioner-to-launch-investigation-into-sale-of-%E2%80%9Canonymized%E2%80%9D-health-data

Federal Court Dismisses Application to Expunge Horlicks Trademarks Federal Court Dismisses Application to Expunge Horlicks Trademarks

Trademark
March 6, 2019March 6, 20192019-03-06
On February 19, 2019, the Federal Court (Court) issued its decision in Bedessee Imports Ltd. v. GlaxoSmithKline Consumer Healthcare (UK) IP Limited (2019 FC 206), dismissing an application brought by Bedessee Imports Ltd (Bedessee) to expunge GlaxoSmithKline Consumer Healthcare (UK) IP Limited (GSK)’s HORLICK’S and HORLICKS trademarks. Bedessee sought to expunge GSK’s HORLICK’S and HORLICKS trademarks registered in 1917 and 1952 respectively (the Marks), on the basis that they:
Deeth Williams Wall https://www.dww.com/articles/federal-court-dismisses-application-to-expunge-horlicks-trademarks

Nike and the NBA Sued for Copyright Infringement Over Rapper-Inspired Jerseys Nike and the NBA Sued for Copyright Infringement Over Rapper-Inspired Jerseys

Trademark
March 6, 2019March 6, 20192019-03-06
The Brooklyn Nets of the National Basketball Association (NBA") recently wore limited-edition basketball jerseys inspired by Brooklyn-native rapper Notorious B.I.G.  The music artist, who was murdered in 1997, was known for his love for Brooklyn, lyrical ability and bright and colourful sweaters.  The NBA basketball team paid homage by including a design similar to the sweaters the rapper would wear as a trim on the jerseys (as shown in the photo).  Image Source: Brooklyn Nets
Deeth Williams Wall https://www.dww.com/articles/nike-and-nba-sued-for-copyright-infringement-over-rapperinspired-jerseys

Disclaimer: This Newsletter is intended to provide readers with general information on legal developments in the areas of e-commerce, information technology and intellectual property. It is not intended to be a complete statement of the law, nor is it intended to provide legal advice. No person should act or rely upon the information contained in this newsletter without seeking legal advice.

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