E-TIPS

Certain amendments to Canada's Trademarks Act are expected to come into force shortly, which will have a significant impact on the ability to clear "deadwood" official marks currently on the Register. Subsection 9(4) of the Trademarks Act gives the Registrar of Trademarks the authority to give public notice that the protections of the Act which govern official marks do not apply to a particular official mark. The Registrar may give such notice if the holder of the official mark is not a public authority or no longer exists. This section, however, is not yet in force. In anticipation of this section coming into force in the near future, the Canadian Intellectual Property Office (CIPO) has recently released a draft of a Practice Notice introducing a new procedure on how it will exercise its authority.

On June 17, 2022, the Federal Court of Canada (the Court) in Benjamin Moore & Co. v Attorney General Of Canada, 2022 FC 923, allowed the appeals from two decisions of the Commissioner of Patents (the Commissioner) refusing patent applications as not being directed to a patentable subject matter under the Patent Act. The Court concluded that the Commissioner applied the wrong legal test for claim construction and patentable subject matter, remitted the matter back to the Canadian Intellectual Property Office (CIPO) for determination, and instructed the Commissioner on the proper legal assessment for claim construction and patentable subject matter.

On June 16, 2022, the Government of Canada introduced Bill C-27, the Digital Charter Implementation Act, 2022. Bill C-27 is the second attempt at overhauling Canada’s federal privacy legislation, the Personal Information Protection and Electronic Documents Act. Bill C-11, the Digital Charter Implementation Act, 2020, was the first major overhaul of Canada’s privacy regime, as previously reported by the E-TIPS® Newsletter here, but died on the order paper with the announcement of the 2021 federal election.

On May 27, 2022, the Federal Court of Canada (the Court), in Rogers Media Inc. v John Doe 1, 2022 FC 775, issued a “dynamic” site blocking Order preventing access to streaming servers that provide unauthorized streams of National Hockey League (NHL) games in real time. This ruling represents the first dynamic site blocking order granted in Canada.

On June 14, 2022, the Government of Canada introduced Bill C-26, An Act Respecting Cyber Security, which would enact the Critical Cyber Systems Protection Act (the CCSPA) to establish a regulatory cyber security framework and improve baseline security for vital public systems and services.

On June 2, 2022, the Government of British Columbia (B.C.) passed the Anti-Racism Data Act (the Act). B.C. is the first province in Canada to pass legislation that provides for the collection, use, and disclosure of personal information by public bodies (within the province) for the purposes of identifying and eliminating systemic racism and advancing racial equity.

On June 1, 2022, the Office of the Privacy Commissioner of Canada and the provincial privacy commissioners of Alberta, British Columbia and Québec (collectively, the Commissioners) released their findings of a joint two-year investigation into the Tim Hortons mobile ordering application (the App), as previously reported by the E-TIPS® Newsletter here. The Commissioners determined that the App violated applicable federal and provincial privacy laws by collecting location data of its users, without their adequate knowledge or valid consent.

On June 2, 2022, the Rules Amending the Patent Rules were registered by Order in Council, and most provisions will come into force on October 3, 2022. As previously reported by the E-TIPS® Newsletter here, the new Rules are intended to streamline patent examination, reduce patent pendency, and avoid unreasonable delays to assist with the implementation of Canada’s patent term adjustment (PTA) obligation under the Canada-United States-Mexico Agreement (CUSMA).

On June 9, 2022, the Office of the Superintendent of Financial Institutions (OSFI) published its summary response to feedback received from stakeholders regarding draft Guideline B-13: Technology and Cyber Risk Management (Guideline B-13), that will apply to federally regulated financial institutions, as previously reported by the E-TIPS® Newsletter here.

On May 31, 2022, the Federal Court of Canada (the Court), in Janssen Inc v Sandoz Canada Inc, 2022 FC 715, found in favour of Janssen Inc. and Actelion Pharmaceuticals Ltd (collectively, the Plaintiffs), and declared that Sandoz Canada Inc. (Sandoz) would infringe Janssen’s patent by making, constructing, using, or selling macitentan tablets in Canada.

On June 2, 2022, the Supreme Court of British Columbia (the Court) issued its decision in the ongoing class action matter, Douez v Facebook, Inc., 2022 BCSC 914, holding that Facebook, Inc. (Facebook) was liable under several provincial privacy statutes for using class members’ likenesses without their consent.

On May 24, 2022, the Québec government adopted Bill 96, An Act respecting French, the official and common language of Québec (the Bill), which proposes amendments to the Charter of the French language (the Charter) to “affirm that the only official language of Québec is French.” The Bill will significantly impact business operations in Québec, including the use of non-French language trademarks.

On May 18, 2022, the Federal Court of Canada (the Court), in Beijing Judian Restaurant Co Ltd v Meng, 2022 FC 743, found that the trademark registration for the JU DIAN & Design Mark owned by the Respondent, Wei Meng, was registered in bad faith, and therefore invalid and should be expunged from the Register. This decision represents the first time the Court has invalidated a trademark registration under the new section 18(1)(e) of the Trademarks Act (the Act) on the basis of bad faith.

On May 16, 2022, the Office of the Privacy Commissioner of Canada (the OPC) released an Interpretation Bulletin on sensitive information (the Bulletin), which summarizes general principles from judicial decisions and the OPC’s findings to date to guide organizations in meeting their compliance requirements under the Personal Information Protection and Electronic Documents Act (PIPEDA).

On May 12, 2022, the Federal Court of Canada (the Court) issued its decision in DeepRoot Green Infrastructure, LLC v GreenBlue Urban North America Inc., 2022 FC 709, dismissing DeepRoot Green Infrastructure, LLC and DeepRoot Canada Corp.’s (collectively, DeepRoot) contempt motion against GreenBlue Urban North America Inc. (GreenBlue).

On March 24, 2022, the Ontario Divisional Court (the Court) issued its decision in Stewart v. Demme, 2022 ONSC 1790 (Demme), overturning the certification of a class action lawsuit against William Osler Health System (the Hospital) and a nurse that was employed by the Hospital (collectively, the Defendants).

On May 4, 2022, the Office of the Privacy Commissioner of Canada (OPC) released key recommendations aimed at the development of new legislation to replace the current private sector privacy regime under the Personal Information Protection and Electronic Documents Act (PIPEDA). These recommendations come nearly a year after the OPC published its submissions on the former federal Bill C-11, An Act to Implement the Digital Charter 2020 (as previously reported by the E-TIPS® Newsletter here). The federal government indicated its intention to introduce a new bill, as Bill C-11 died on the order paper due to the 2021 federal election call.

On April 20, 2022, the Federal Court of Canada (the Federal Court) issued its decision in Wiseau Studio, LLC v Harper, 2022 FC 568, finding that Wiseau Studio, LLC’s (the Plaintiff) action for copyright infringement was barred by the application of cause of action estoppel.

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.