E-TIPS

The Canadian Intellectual Property Office (CIPO) recently announced the launch of a new industrial designs database. The database, accessible from the CIPO web site, will initially make available approximately 10,000 designs registered as of June 15, 2002. New registrations will be added on a weekly basis. CIPO expects to complete the addition of designs registered prior to June 15, 2002, within six months.

Bill C-37, Canada's "Do-Not-Call" legislation, has been enacted by Parliament as one of its last acts before calling the general election. Through amendments to the Telecommunications Act, the Bill provides a legislative framework for a national, bilingual, do-not-call list aimed at reducing the number of unwanted telephone calls to consumers. Once a consumer has been added to the list, telemarketers who call will face a fine of up to $1,500 (for individuals) or up to $15,000 (for corporations).

Bill C-83, An Act to amend the Food and Drugs Act (drug export restrictions), was given first reading in the House of Commons on Friday, November 25, 2005. The legislation (Amendments) was tabled in an effort to respond to US legislative efforts to legalize bulk imports of cheaper brand-name Canadian drugs and to create an early warning system for drug shortages. The Amendments would require stakeholders to provide a range of information to the federal Minister of Health and by giving the Minister the power to prohibit exports and to limit the extent of pharmaceutical sales from Internet pharmacies.

Some US states that use voting machines are taking dramatic measures to ensure the effectiveness and reliability of the machines in an effort to comply with a January 1st deadline set out in the federal Help America Vote Act of 2002 (Vote Act)

In a recent case, Aral v Earthlink Inc, the California Court of Appeal wrestled with the complexities of overlapping federal, state and common law principles regarding the rights of a consumer bound by an online standard form contract to participate in a "reasonable" dispute settlement process.

A ruling from the US Trademark Trial and Appeal Board (TTAB) is expected imminently on the registrability of the first taste trade-mark in the US. If the TTAB finds in favour of its registrability, this will bring the protection of taste marks in line with other non-traditional marks in the US, such as colours and scents.

On November 15, the federal Minister of Public Safety and Emergency Preparedness introduced the long-awaited Modernization of Investigative Techniques Act ("MITA"). The dissolution of Parliament has killed the bill, but observers agree that it will be back in the New Year, regardless of which party forms the government.

In a much anticipated decision, the Supreme Court of Canada in Kirkbi AG v Ritvik Holdings Inc, 2005 SCC 65, commonly known as the Lego versus Mega Bloks case, upheld both the trial and appeal court decisions that functional elements cannot be protected either by registered trade-marks or by the common law tort of passing off.

Sony BMG Music Entertainment (Sony) has recalled all music CDs with Extended Copy Protection (XCP), a program that was designed to prevent illegal copying of the CD, in the face of widespread reaction in the media and from consumers to the unintended consequences of using the program. At least three lawsuits have been filed regarding the XCP program and its problems.

The US federal government is concerned about possible damage from a disruption to BlackBerry® service stemming from any injunction that may issue in the ongoing patent dispute between Research In Motion Ltd (RIM) and NTP Inc (NTP).

In a case which will be closely analyzed by IP lawyers and competition lawyers alike, the Federal Court of Appeal has held that, as a matter of law, a patent assignment can violate competition law. More specifically, an assignment of a patent could constitute an agreement or arrangement to lessen competition unduly, contrary to section 45 of the Competition Act.

Health Canada recently released a revised Guidance Document entitled "Drug Name Review: Look-alike Sound-alike (LA/SA) Health Product Names". The document is intended to clarify the way information and material related to proposed drug names submitted by drug companies is handled by the Health Products and Food Branch.

The Canadian Intellectual Property Office (CIPO) has announced that the small entity remedial provisions of Bill C-29 will come into force on February 1, 2006. Patent owners will have 12 months from that date to make any top-up payments in order to remedy underpaid fees (including payments mistakenly paid at a small entity rate). Case law in Canada had declared that it was impossible to make such top-up payments in the ordinary course, forcing the Government to enact a special regime to allow patent owners to secure their patent protection. Canadian patents can be held invalid for underpaid fees.

The Federal Court of Canada, Trial Division, has issued an injunction against an individual, prohibiting him from communicating hate propaganda over the Internet while a complaint against him is pending before the Canadian Human Rights Commission (CHRC).

Recently, two US lower courts considered whether the threshold of evidence required to obtain an order allowing cell phone surveillance should be equivalent to or greater than that required for a land line surveillance order.

In a precedent setting decision, Ex Parte Lundgren, the United States Board of Patent Appeals and Interferences (Patent Board) has opened the field wider for business method patents. In the Lundgren decision, the Patent Board reversed the USPTO-imposed "technological arts" test that had been used to narrow somewhat the issue of these patents.

The Information and Privacy Commissioner of Ontario (Commissioner) launched an investigation last month after receiving word from a reporter for the Toronto Star that patient records containing personal health information had been strewn about the streets of a downtown Toronto intersection during a movie shoot. The incident brought into play the provisions of Ontario's new Personal Health Information Protection Act, 2004, (PHIPA).

The European Court of Justice (ECJ), the European Union's highest court, has ruled that "feta" is a traditional Greek name and should enjoy protection within the 25-nation Community.

Agence France-Presse (AFP) has filed a copyright infringement suit against Google in US District Court after Google put AFP headlines, photos and article leads on the Google News web page, http://news.google.com. AFP is seeking US$17 million in damages and an injunction barring Google from further publishing its news stories and photos.

The Alberta Privacy Commissioner has found that the scanning of patrons' identification at the door of a nightclub violates the province's Personal Information Protection Act (PIPA). The report concluded that purposes for which the personal information was collected were not reasonable, contrary to section 11 of PIPA.