Canada: Canadian IP Law And Practice In 2016: Reviewing The Highlights

Last Updated: January 11 2017
Article by Nelson Godfrey and Neil Padgett

As the calendar turns the page from 2016 to 2017, we take the opportunity to review Canadian IP law and practice highlights from the past year.

Patent and trademark agent privilege recognized

Amendments to Canada's Patent Act and Trademarks Act which came into force in June, have provided for the recognition of patent agent and trademark agent privilege. In recognition of the multi-jurisdictional realities of patent and trademark procurement, these privileges also extend to communications between an individual who is authorized to act as a patent agent or trademark agent in a country other than Canada, provided certain pre-conditions are met.

These changes represent welcome developments for Canadian patent and trademark practice and provide clarity for patent and trademark owners in Canada.

More detail on Patent and Trademark Agent Privilege can be found in our June 22, 2016 IP Update.

CETA signed, enabling legislation introduced in Canada's Parliament

On October 30, 2016, Canada and the European Union officially signed the Comprehensive Economic and Trade Agreement (CETA). The very next day, proposed legislation intended to implement CETA was introduced before Canada's House of Commons.

Bill C-30 makes amendments to a broad range of Canadian laws, including intellectual property legislation. Of particular note, under Bill C-30, holders of pharmaceutical patents will be entitled to term extensions of up to two years to account for regulatory delays. Implementation of CETA will also bring other changes to Canada's IP laws including a potential end to "dual litigation" in relation to pharmaceutical patents and restriction of certain European geographical indications.

More details regarding CETA and its implications for IP protection in Canada can found in earlier IP Updates, including our October 31, 2016 and December 9, 2016 IP Updates.

Geographically descriptive trademarks law and Office practice clarified

Canada's Federal Court of Appeal revisited the law relating to trademarks alleged to be clearly descriptive or deceptively misdescriptive of origin in its February 23, 2016 decision in MC Imports Inc v AFOD Ltd, 2016 FCA 60. We first highlighted this development in an IP Update in March.

Later in the year, on November 9, 2016, the Trademarks Office released a Practice Notice setting out how the Trademarks Office will apply section 12(1)(b) of the Trademarks Act in view of that decision. In future, the Office will consider a trademark clearly descriptive of a place of origin if the trademark is a geographic name (i.e., where research shows that a trademark's only, primary, or predominant meaning is as a geographic name) and the associated goods or services originate from that location. A trademark will be considered deceptively misdescriptive of a place of origin if the trademark is a geographic name, the goods or services do not originate from that location, and the ordinary consumer would be misled as to the origin of the goods or services.

Test for obviousness-type double-patenting clarified

On April 20, 2016, the Federal Court of Appeal issued its decision in Mylan Pharmaceuticals ULC v Eli Lilly Canada Inc, 2016 FCA 119. The decision clarified the test for obviousness-type double patenting, making clear that it is the claims of the first and second patents that are to be compared to determine "whether there is an inventive step from the first patent to the second". The Court, however, declined to clarify which of the priority date of the first and second patents is the relevant one for assessment of obviousness-type double patenting.

Later in the year, the Federal Court of Appeal maintained that the relevant date for assessing obviousness-type double-patenting is an open question in Canadian law in its judgment in Apotex Inc v Eli Lilly Canada Inc, 2016 FCA 267.

More detail on these decisions can be found in our May 12, 2016 and November 24, 2016 IP Updates, respectively.

Injunctions for retailers of television set-top boxes

An interlocutory injunction was granted by Madam Justice Tremblay-Lamer of the Federal Court of Canada to plaintiff broadcasters and broadcast distribution undertakings against defendant retailers of television set-top boxes "pre-loaded" with applications that provide their users with unauthorized access to copyrighted television content. The Plaintiffs were successfully represented by François Guay and Guillaume Lavoie Ste-Marie of Smart & Biggar's Montreal office.

In its reasons, the Court found that that the plaintiffs had established a strong prima facie case that sales of such "set-top boxes" constitute violations of both the Copyright Act and Radiocommunication Act, that the plaintiffs would suffer irreparable harm if the injunction were not granted, and that the balance of convenience weighed in favour of granting the injunction. As previously reported, the decision illustrates the willingness of the Federal Court of Canada to grant injunctive relief against those that participate in and encourage infringing activity.

Norwich order in reverse class action for copyright infringement

On July 28, 2016, the decision of the Federal Court was released in Voltage Pictures, LLC, et al v John Doe, 2016 FC 881, a motion by the plaintiffs against the non-party respondent Rogers Communications Inc. to disclose the identity of "John Doe". "John Doe" is a proposed representative respondent in a "reverse" class action lawsuit being brought by the plaintiffs against a number of unidentified Canadians whom the plaintiffs allege have infringed copyright in certain motion pictures.

The Court ordered Rogers to disclose the individual's name and address but not other additional personal information sought by the plaintiffs, including that individual's e-mail address and phone number. The Court, however, refused to allow the plaintiffs to pass their enforcement costs on to Rogers and its customers, and instead ordered that Rogers be paid at its hourly rate for its fees in providing the information (a decision which the plaintiffs have appealed).

The Court has not yet ruled on whether the proceeding will be class certified. Regardless, the decision to release the information represents an important procedural step in favour of the availability of such relief in Canada.

Issue payment underpayment does not render patent invalid

In a decision reconciling two conflicting lines of Canadian jurisprudence, Canada's Federal Court clarified that, unlike a "substantive" breach of the Patent Act going to the "heart" of the patent "bargain", an "administrative breach" of the statute can only be fatal to a patent application.

More particularly, the Court in Apotex Inc v Pfizer Inc, 2016 FC 136, held that the fact that the final fee for issuance of a patent was erroneously paid at the "small entity" level for a "large entity" did not then serve to invalidate the patent that subsequently issued.

Further discussion of this development can be found in our March 31, 2016 IP Update.

Public display of non-French trademarks in Quebec

As we reported in our November 16, 2016 IP Update, amendments to Quebec's Charter of the French Language intended to ensure the presence of French language on the storefronts of businesses that display non-French trademarks on public signs entered into force on November 24, 2016. Now, where a non-French trademark appears on a public sign or poster outside an immovable property in Quebec, the non-French trademark must be accompanied by a generic term or a description of the products or services concerned, a slogan or another French-language indication informing consumers and passersby of the products or services offered therein. More details on these amendments, including the transitional provisions for existing public displays, can be found in the aforementioned IP Update.

Canada's Competition Bureau releases revised IP enforcement guidelines

Following an extensive public consultation and earlier drafts, the Competition Bureau released a revised version of its Intellectual Property Enforcement Guidelines on March 31, 2016. The revised Guidelines provide clarifications and additional guidance on the Bureau's approach to patent settlements, product switching, patent assertion entities, and standard-essential patents. For more details, refer to our May 18, 2016 IP Update.

Concluding remarks

All in all, 2016 was another lively year in Canadian IP law and practice. 2017 promises the same and we will continue to provide timely information and updates on developments in Canadian IP law via IP Update and on Canadian life science IP and regulatory law developments via Rx IP Update throughout the coming year. Keep informed all year long by subscribing to both.

For further information regarding Canadian IP law and practice, please contact us.

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.

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Nelson Godfrey
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