E-TIPS

On May 21, 2004, in a landmark decision, the Supreme Court of Canada ruled that Monsanto's patent for the genes and cells found in its Roundup-Ready canola was valid, and that Percy Schmeiser, a Saskatchewan farmer who had grown the canola without a licence, had infringed the patent. For the background to the case, see an earlier issue of E-TIPSâ„¢ (Vol 2 No 16 January 22, 2004).

The intersection between industrial design protection and trade-mark protection was highlighted in a recent 2003 Federal Court of Canada decision. In WCC Containers Sales Limited v Haul-All Equipment Ltd (2003 FC 962), the Federal Court Trial Division expunged Haul-All's registration under the Trade-marks Act for a SLOPE BIN CONTAINER DISTINGUISHING GUISE DESIGN. The Court found that the container design (shown below), which Haul-All had sold for many years as an animal-proof refuse bin, was distinctive, but was primarily functional.

On April 29, 2004, the US Congress renewed an amended form of the Internet Tax Freedom Act (47 USC 151), now called the Internet Tax Nondiscrimation Act (108th 2d S 150 ES). The legislation extends application of the tax-exempt status of Internet access until November 1, 2007.

On May 11, 2004, the Minister of Industry announced the formation of a Special Task Force dedicated to the issue of spam. During 2002, a plan to combat spam was developed in concert with stakeholders in the industry, such as ISPs and large corporations. The Special Task Force will now have the responsibility of implementing this plan, which calls for the use of existing and possibly new legislation, along with technical measures developed by the industry, to fight spam.

The Federal Court Trial Division recently prohibited the Minister of Health from issuing a Notice of Compliance (NOC) to Rhoxalpharma Inc in connection with its 25 mg and 50 mg capsules of the drug cyclosporine until the expiry of Canadian Patent No 1,308,656 (the "˜656 Patent). The owners of the "˜656 Patent, Novartis Pharmaceuticals Canada Inc and Novartis AG (Novartis) had commenced the application in response to having received a Notice of Allegation from Rhoxalpharma asserting that its capsules would not infringe the'656 Patent.

On May 13, 2004, Industry Canada published Principles for Electronic Authentication. The Principles are meant to serve as benchmarks for the development, provision and use of electronic authentication services in Canada. They attempt to do this by identifying the functions and responsibilities of participants in authentication processes and providing those participants with a framework to assess and manage the risks in meeting those responsibilities. In addition, the Principles identify security, privacy, disclosure, and complaint handling matters that need to be considered at each stage of the design, development, implementation, and assessment of an authentication process. However, the Principles do not address the liabilities that could be borne by various participants involved in the authentication process. In particular, the Principles do not consider issues of consumer protection or liability.

As noted in the previous edition of E-Tipsâ„¢ (Vol 2 No 24 May 12, 2004), the Canadian Treasury Board Secretariat published Secure Electronic Signature Regulations under the Personal Information Protection and Electronic Documents Act (PIPEDA) and the Canada Evidence Act on May 8, 2004.

An employee of CP Rail, who is also a union local representative, has commenced an action in the Federal Court of Canada to attempt to stop his employer from using video surveillance cameras at its maintenance shop located in Toronto, Ontario (Eastmond v Canadian Pacific Railway and Privacy Commissioner of Canada).

Microsoft has recently released a new digital rights management software, code-named Janus, that will allow users to set expiration dates on digital files such as digital music or movie files.

Bill C-14, An Act to amend the Criminal Code and other Acts (the Amending Act), received Royal Assent on April 22, 2004. Among the amendments are exemptions added to the Criminal Code (the Code) and Financial Administration Act (FAA) relating to the servicing and security enhancement of computer systems.

A US District Court in Florida has ruled that a Florida company's data harvesting of a rival company's web site does not constitute copyright infringement. The case was brought by Nautical Solutions Marketing (NSM), which owns and operates the Yachtbroker.com web site. NSM sought a declaration that its harvesting activities did not infringe the copyright of Boats.com, the operator and owner of a rival yacht listing web site, Yachtworld.com.

The Canadian Personal Information Protection and Electronic Documents Act (PIPEDA) establishes rules that govern the collection, use and disclosure of personal information in the course of commercial activity. The general rule of the statute is that when disclosing personal information, an organization must first obtain the individual's consent.

The US Federal Trade Commission (FTC) used a combination of high- and low-tech investigative techniques to collect evidence in support of the first criminal complaints under the new CAN-SPAM Act, which came into effect on January 1, 2004. The FTC filed the complaints against Phoenix Avatar, a company operating in the Detroit area, and Global Web Promotions, a company operating from Australia and New Zealand, for sending millions of allegedly deceptive messages. In both cases, the companies advertised and sold an allegedly fraudulent diet patch for weight loss purposes.

On May 8, 2004, the Treasury Board Secretariat published the Secure Electronic Signature Regulations under the Personal Information Protection and Electronic Documents Act (PIPEDA) and the Canada Evidence Act.

© 2004, Deeth Williams Wal LLP. All Rights Reserved. By: Heather Watts (April 30, 2004) The predecessor to Bill C-9 - An Act to amend the Patent Act and the Food and Drugs Act (Bill C-56), was introduced to the 2nd session of the 37th Parliament in the fall of 2003.

The Canadian federal government has removed a controversial provision of Bill C-9, the proposed legislation to amend the Patent Act allowing the export of cheaper versions of patented drugs to poor countries struggling to cope with AIDS, malaria, tuberculosis and other health crises. On April 20, 2004, a clause was removed that would have given brand-name pharmaceutical companies the "right of first refusal", allowing them the first chance to fill shipment contracts arranged by generic companies. For a note on the genesis of the legislation, see an earlier issue of E-TIPSâ„¢, (Vol 2 No 9 October 9, 2003).

With the marine recreational season just around the corner, Canadian boaters could literally face uncharted waters. Most boaters use marine charts, which act like road maps, to navigate coastal waters. Although many of the charts remain paper-based, a growing number have become electronic. However, the use of certain electronic charts may be illegal.

Maryland has become the first US state to draft an anti-spamming law intended to work in conjunction with the US federal CAN-SPAM Act that came into effect January 1, 2004.

In a previous issue of E-TIPSâ„¢ (Vol 2 No 9 October 9, 2003), the Grill Gear decision was noted in which the Federal Court of Canada, Trial Division, found that when considering descriptiveness of a design mark, both the word component and the design features must be looked at as a whole. In that case the Court held that, as a design mark, it was not accurate to say that, when "sounded", the mark was clearly descriptive of the wares.

National Academies, a private umbrella organization for providing advice to the US government and the general public, recently published its report on the US Patent system entitled: A Patent System for the 21st Century.