The previous federal government committed Canada to sweeping
changes to the legislation and regulations governing virtually
every category of intellectual property in the country. Some of
these changes have largely already taken effect. These include
amendments to the Copyright Act and Trade-marks
Act to introduce customs enforcement measures against
counterfeit goods. Other changes, such as the introduction of
privilege for certain communications between clients and their
patent agents and trade-mark agents, will come into force on a date
that has been fixed. Still, other changes, such as those relating
to Canada's adherence to the Hague Agreement Concerning the
International Registration of Industrial Designs and its adherence
to the Madrid Protocol, have been enacted, but no date has been
fixed for when they will take effect. They await finalization of
treaty adherence, the introduction of regulations and changes to
the infrastructure of the Canadian Intellectual Property Office
CIPO recently announced that the most significant changes to the
Trade-marks Act will not be implemented until 2018, at the
earliest. These changes include: (1) elimination of "use"
as a requirement for trade-mark registration, (2) a broadening of
the categories of registrable marks, (3) a shortening of the term
of a registration and subsequent renewal terms from 15 years to 10
years, and (4) the fact that adoption of the Madrid Protocol will
not be implemented until at least 2018. The delay in the
implementation of these changes will, no doubt, impact trade-mark
owners over the next few years. For example, the opportunity to
obtain a 15-year registration term before the changes take effect
may result in an increased number of trade-mark applications being
filed in the next year.
TWO | TRANS-PACIFIC PARTNERSHIP AGREEMENT
If adopted by Canada's new federal government, the recently
announced Trans-Pacific Partnership (TPP), an ambitious economic
and free trade agreement between Canada and 11 other countries that
represent approximately 40 per cent of the world's economy,
will require some important changes to Canada's intellectual
property (IP) laws. One example is the replacement of Canada's
"notice and notice system" with a "notice and
takedown system." Under the former system, an Internet service
provider (ISP) is required to notify a potentially infringing
customer of the ISP's receipt of a complaint from a copyright
holder. Under the latter system, the ISP will be compelled, under
certain circumstances, to remove the allegedly infringing material
from its customer's website. The TPP will also require Canada
to extend the copyright term for several categories of works.
THREE | LITIGATION BY NON-PRACTISING ENTITIES
For a number of years, more than half of all patent infringement
proceedings commenced in the United States have been filed by
non-practising entities (NPEs). Despite the prevalence of NPE
patent litigation in the U.S., it was relatively uncommon for these
NPEs to file suit in Canada, even for NPEs based in Canada.
However, this situation may be changing. In recent months, NPEs
have filed several patent infringement proceedings in Canada's
Federal Court. At the same time, the U.S. has introduced measures
to discourage NPE litigation. It is uncertain whether there is a
correlation between these two developments. It is also too early to
predict whether the recent increase in NPE litigation in Canada is
a harbinger of things to come. We continue to monitor the
FOUR | IP CLASS ACTIONS
Traditionally, most Canadian IP class action litigation has
arisen from claims that a defendant has infringed the copyright of
large groups of business owners or professionals. Quite often, the
claimed damages have been relatively small on a per-plaintiff
basis. During the past year, however, plaintiffs have filed actions
in which the purported class is seeking certification of claims
involving allegations of patent abuse.
In each of these cases, the plaintiffs allege that a
pharmaceutical manufacturer caused harm to others by obtaining and
enforcing its rights in an invalid patent for a drug in order to
delay market entry of a drug's generic equivalent. The
potential classes of plaintiffs in these cases are quite broad.
They include virtually every participant in the channels of trade,
such as distributors, pharmacies, insurers and consumers. The
pleaded causes of action are also rather broad, including unlawful
interference with economic interests, waiver of tort, unjust
enrichment and conspiracy.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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The Canadian Intellectual Property Office has issued a report entitled IP Canada Report 2016, discussing trends in IP use domestically, and by Canadians abroad, based on analysis of CIPO's internal data and those collected by the World Intellectual Property Organization.
The value of reliance on a trade-mark registration, as opposed to prior use, stands out sharply in the recent Federal Court of Appeal case of Pizzaiolo Restaurants Inc. v. Les Restaurants La Pizzaiolle Inc. ( 2016 FCA 256 October 28, 2016).
This is an appeal from the Federal Court's decision setting aside the Registrar of Trade-marks decision to the extent that it dismissed the applicant's opposition regarding the mark PIZZAIOLO and Design.
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