International Reports - More Updates

Bereskin & Parr LLP

01 Nov 2017
Identifying and enforcing trade secrets

Trade secrets allow businesses to obtain a commercial advantage over competitors which do not know or cannot use the secret. However, the secret must be managed carefully to avoid loss of rights. Full text

25 Oct 2017
Dotting the ‘.com’ and crossing the ‘.sucks’: how to manage your domain name portfolio

Domain name strategy and portfolio management should be a key component of a brand’s overall IP strategy ? a mindful, measured and disciplined approach is crucial. Full text

18 Oct 2017
(The cult of) personality rights in Canada

Personality – including, name, voice, likeness and signature – can have tremendous commercial value. Although lagging somewhat, personality protection can be found in Canadian trademark law, in common law under the torts of misappropriation of personality and passing off, and under privacy statues.    Full text

11 Oct 2017
CBSA accepting tips on imports of dangerous counterfeit and pirated goods

The Canada Border Services Agency's confirmation that its Border Watch Line accepts information on shipments of dangerous counterfeit or pirated goods destined for Canada is welcome news for rights holders that deal in goods which could, in the wrong hands, pose health, safety or security concerns to Canadians. Full text

04 Oct 2017
Use in Canada, get it before it’s gone: Federal Court provides clarity on claiming use

The Federal Court of Canada has provided some clarity on claiming use in Canada as a trademark filing basis, although some ambiguity remains. Ironically, this comes just as Canadian trademark law is on the cusp of a fundamental change to do away with use as a requirement for trademark registration.   Full text

27 Sep 2017
Supreme Court curtails inutility challenges with AstraZeneca decision

A recent Supreme Court decision has significantly curtailed the ability to challenge a patent monopoly on the basis of an unsubstantiated promise in the patent application that the claimed subject matter of the patent will provide a particular utility. Full text

20 Sep 2017
CETA to come into force – things to know about geographical indications

The act which will implement the Comprehensive Economic and Trade Agreement between Canada and the European Union comes into force this week. The agreement covers a wide range of areas, including import and export tariffs, labour and environment, food and drugs, and intellectual property. Full text

13 Sep 2017
Planning ahead: preparing for changes to Canadian trademark law

The most recent estimate for the implementation of amendments to the Trademarks Act is early 2019. The changes will bring opportunities for Canadian and international trademark owners, and it is not too early to plan for them. Full text

06 Sep 2017
Protecting your software mojo in the smartphone screen era

Design protection can be an inexpensive yet powerful tool to block competitors from copying unique and innovative design elements that distinguish one mobile app from another in the smartphone screen marketplace. Full text

30 Aug 2017
Evidence of electronic contract requires demonstration of its integrity

The Quebec Superior Court recently ruled on the level of evidence required to prove the existence of an electronic contract. In the case at hand, the court held that simply typing in a name on an agreement does not correspond to the definition of an ‘electronic signature’. Full text

23 Aug 2017
Identifying the last line of defence for innovative Canadian drugs

A review of innovator drugs approved by Health Canada in 2015 and 2016 supports the conventional wisdom that innovative drug companies should continue to pursue patents and data protection whenever both are available. Full text

16 Aug 2017
‘The Internet has no borders’: worldwide de-indexing injunction upheld against Google

The Supreme Court recently issued a landmark decision which confirmed that Canadian courts have jurisdiction to issue interlocutory injunctions against a party’s activities that extend beyond Canada and have global reach. Full text

09 Aug 2017
CIPO consultation on proposed Patent Rule amendments

The Canadian Intellectual Property Office is conducting a public consultation on proposed amendments to the Patent Rules. The Patent Rules are being amended to enable the implementation of various outstanding amendments to the Patent Act. Full text

02 Aug 2017
Proposed new regulations for PMNOC proceedings and CSPs

The government recently published proposed new regulations to change the procedure under the Patented Medicines (Notice of Compliance) Regulations to fundamentally change the process from a paper-based court application to a full-blown patent infringement or validity trial. Full text

26 Jul 2017
Proposed new Industrial Design Regulations ? detailed review

The Canadian Intellectual Property Office recently published proposed new Industrial Design Regulations. The regulations are intended to implement and complement amendments to the Industrial Design Act. Full text

19 Jul 2017
Witness credibility and adducing reliable evidence in copyright infringement cases

The Federal Court recently dismissed a copyright infringement action on a summary trial motion. The court found that the plaintiff had failed to establish infringement on a balance of probabilities, largely because of contradictory statements made by the plaintiff’s witnesses.   Full text

12 Jul 2017
Supreme Court rules on ‘promise of the patent’ doctrine

The Supreme Court has released its long-awaited decision in what has become perhaps one of the most hotly debated topics in Canadian patent law: whether the judicially created ‘promise of the patent’ utility doctrine has a proper place in the analysis of the validity of Canadian patents. Full text

05 Jul 2017
Supreme Court finds Facebook’s forum selection clause unenforceable

Facebook’s forum selection clause was recently found unenforceable by the Supreme Court, allowing a class action brought under the British Columbia Privacy Act to move forward in the British Columbia courts. Full text

28 Jun 2017
Are trademark surveys worth the cost?

Owing to decades of experience and scientific knowledge, properly conducted trademark surveys can assess the perceptions of selected universes of consumers with reasonable accuracy. However, the question remains whether the probative value of a trademark survey justifies its cost. Full text

21 Jun 2017
Trademark owners be warned: certain services may require a brick-and-mortar location in Canada

The cautionary lesson emerging from a rash of Trademarks Opposition Board decisions over the past several years is that owners of registrations for services without brick-and-mortar establishments in Canada should ensure that their registrations also cover ‘reservation services’ or other services that are rendered in Canada. Full text

14 Jun 2017
Clearing hurdles in the race for blockchain patents

As the many benefits of blockchain technology are increasingly recognised, efforts to protect new innovations and improvements to blockchain technology have led to a surge in patent filings. Successfully navigating the patent application process means understanding recent legal developments concerning patentable subject matter. Full text

07 Jun 2017
Federal Court of Appeal clarifies word mark considerations when assessing likelihood of confusion

The Federal Court of Appeal recently clarified that, when considering confusion, the Trademarks Opposition Board need not consider all of the potential ways in which an opponent’s registered word mark may be depicted. Full text

24 May 2017
Interlocutory injunction available even for marks that lack inherent distinctiveness

While the Federal Court is often the preferred venue for trademark and other IP litigation, the Quebec Superior Court recently demonstrated that provincial courts can be a friendlier forum for injunctions in trademark law, even in cases involving unregistered rights. Full text

26 Apr 2017
Go your own way: Patent Office instructs examiners to disregard Supreme Court precedent

Materials from a recent refresher training for examiners at the Canadian Intellectual Property Office highlight inconsistencies between its examination practices and Supreme Court precedent when construing the claims of patent applications. Full text

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Issue 86