E-TIPS

On August 7, 2023, the Canadian Intellectual Property Office (CIPO) launched a public consultation on a proposed regulatory framework for providing a patent term adjustment (PTA) to compensate patent owners for unreasonable delays in the processing of patent applications.

On July 17, 2023, the Federal Court of Canada (the Court) issued its public judgement and reasons for Janssen Inc. v Canada (Health), 2023 FC 870, dismissing Janssen Inc.’s (Janssen’s) application for judicial review of a decision from the Office of Submissions and Intellectual Property (OSIP), in which OSIP refused to list Canadian Patent No. 3,113,837 (the 837 Patent) on the Patent Register against the drug, STELARA.

On July 26, 2023, the Federal Court of Appeal (FCA) issued its decision in Canada (Attorney General) v Benjamin Moore & Co., 2023 FCA 168, allowing the Attorney General’s (AG) appeal from an order of the Federal Court (FC) directing the Commissioner of Patents (the Commissioner) to adopt a specific legal framework in its assessment of the patentability of computer-implemented inventions.

On July 14, 2023, the Canadian Centre for Cyber Security published a guidance document (the Guidance) on the potential risks associated with generative artificial intelligence (AI) and possible mitigation measures for organizations and individuals.

On June 28, 2023, the Federal Court of Canada (the Court) in Warner Bros Entertainment Inc v Tyler White DBA Beast IPTV, 2023 FC 907 sentenced the Defendant to incarceration for 60 days after being found guilty of contempt of court for disobeying numerous provisions of an interim order.

On June 2, 2023, the Federal Court of Canada (the Court) issued its decision in Kiva Health Brands LLC v Limoneira Company, 2023 FC 774, finding that the Trademarks Opposition Board (the Board) erred in relying on a recordal of change of title and failing to properly assess the alleged assignment of rights to the trademark KIVA from Associated Citrus Packers Inc. (ACP) to Limoneira Company (Limoneira).

On July 6, 2023, the Federal Court of Canada issued its long-awaited decision in Energizer Brands, LLC v Gillette Company, 2023 FC 804, in which it found that the defendants’ use of the plaintiffs’ registered trademarks ENERGIZER and ENERGIZER MAX in comparative advertising on battery packaging stickers depreciated the value of the goodwill attaching to the trademarks.

On July 13, 2023, the Supreme Court of Canada (SCC) dismissed applications for leave to appeal from a trilogy of judgments issued by the Ontario Court of Appeal (ONCA): Owsianik v Equifax Canada Co., et al., 2022 ONCA 813 (SCC File No. 40577) (Owsianik); Obodo v Trans Union of Canada, Inc., 2022 ONCA 814 (SCC File No. 40555); and Winder v Marriott International, Inc., et al., 2022 ONCA 815 (SCC File No. 40573).

On June 30, 2023, The California Superior Court of Sacramento County (the Court), in California Chamber of Commerce v California Privacy Protection Agency, No. 34-2023-80004106-CU-WM-GDS (Cal. Super. June 30, 2023) (minute order), granted the Chamber of Commerce’s Writ of Mandate in part, which delayed enforcement of the first set of regulations implemented under the California Privacy Rights Act of 2020 (CPRA) from July 1, 2023, to March 29, 2024. The Court also mandated a one-year grace period between the adoption of future CPRA regulations and their regulatory enforcement.

On July 6, 2023, the Federal Court of Canada (the Court) issued its decision in Fromfroid S.A. v 1048547 Ontario Inc, 2023 FC 925, granting the plaintiff’s (Fromfroid’s) action against the defendants, 1048547 Ontario Inc. (Skotidakis) and Frimasco Inc. (Frimasco), for infringement of Canadian Patent No 2,301,753 (the 753 patent).

On June 23, 2023, in Hermès International, et al. v Rothschild, S.D.N.Y., No. 1:22-cv-00384, the US District Court for the Southern District of New York (the Court) granted Hermès International and Hermès of Paris, Inc. (collectively, Hermès) a permanent injunction against digital artist Mason Rothschild (legal name, Sonny Estival). The case is notable as it is one of the first to apply trademark law to non-fungible tokens (NFTs).

On June 21, 2023, the Privacy Commissioner of Canada met with fellow members of the G7 data protection and privacy authorities (collectively, the DPAs) to discuss global privacy issues and enforcement cooperation. Based on these discussions, the DPAs released a joint statement (the Statement) on generative artificial intelligence (AI) technologies and a communiqué (the Communiqué) that addresses key issues currently occupying the group’s focus.

On June 26, 2023, the Federal Court of Canada (the Court) issued its decision in Voltage Pictures, LLC v Salna, 2023 FC 893, refusing to certify a reverse class action proceeding for the second time in relation to a claim for file-sharing copyright infringement.

On June 8, 2023, the King’s Bench for Saskatchewan (the Court) in South West Terminal Ltd v Achter Land & Cattle Ltd, 2023 SKKB 116, ruled that the “thumbs-up” emoji sent via text was a valid form of acceptance of a contract, ordering over $82,000 in damages for breach of contract.

On June 7, 2023, the Office of the Information and Privacy Commissioner of Ontario (IPC) released its 2022 annual report, The Vision of a Modern and Effective Regulator (the Report), where it included among its recommendations, a call for the Ontario government to implement a robust framework to govern the use of artificial intelligence (AI) technologies.

On June 21, 2023, amendments to the patent, trademark, and industrial design regulations were published in the Canada Gazette. The amendments increase most Canadian Intellectual Property Office (CIPO) fees by 25% over the original 2024 fee amounts, and are set to come into force on January 1, 2024. This represents the first comprehensive fee increase since 2004.

On June 2, 2023, the Federal Court of Appeal (FCA) issued its decision in Eli Lilly Canada Inc. v Apotex Inc., 2023 FCA 125, dismissing an appeal relating to a decision of the Federal Court (FC) finding Canadian Patent No. 2,371,684 (the 684 Patent) invalid on the basis of obviousness and anticipation.

On May 29, 2023, the Federal Court of Canada (the Court) in French v The Royal Canadian Legion, 2023 FC 749, dismissed Leonard French’s (the Plaintiff’s) action for copyright and moral rights infringement relating to its copyright in a stuffed animal, due to the Defendant, the Royal Canadian Legion, being shielded by subsection 64(2) of the Copyright Act (the Act ).

On May 29, 2023, the Office of the Privacy Commissioner of Canada (the OPC) published new guidance on workplace privacy for employers that are subject to federal privacy legislation.

On May 26, 2023, the Federal Court of Canada (the Court) issued its decision in Vidéotron Ltée v Konek Technologies Inc., 2023 FC 741, in which the Court issued an injunction prohibiting the Defendants from retransmitting TVA Sports channels, and awarded statutory damages of $553,000.