In Patagonia, Inc. v. Labatt Brewing Company Limited, the Federal Court reviewed a decision of the Registrar regarding whether Labatt had submitted sufficient evidence of use of its “PATAGONIA” trademark under Section 45 of the Trademarks Act. A key issue was the cropped label of Patagonia beer submitted by Labatt.

Patagonia Inc. contested the Registrar’s acceptance of the cropped label, claiming that it could have left out crucial words or symbols that might influence how the public views the trademark, and suggesting that any such omission might have been intentional. However, the Court found this argument to be speculative and agreed with the Registrar’s view that the cropped label, coupled with other evidence such as sales receipts, was adequate to demonstrate use of the “PATAGONIA” mark by Labatt during the relevant period. The Court upheld the Registrar’s decision and dismissed Patagonia’s appeal.

Click here to read the full decision.

How does using artificial intelligence in creating a work affect copyright protection under Canadian law?

The Federal Court will now have to decide this question after the Samuelson-Glushko Canadian Internet Policy and Public Interest Clinic (“CIPPIC”) commenced a challenge to a Canadian copyright registration for an image called “Suryast”. The registration lists both the RAGHAV Artificial Intelligence Painting App and Mr. Ankit Sahni as co-authors. CIPPIC is arguing that the work lacks originality and that an AI program cannot be an “author” under Canadian law.

This challenge references the United States Copyright Office’s 2023 decision regarding an attempt in the United States to register copyright in the same image. There, the Copyright Office ruled that an AI program could not be an author. However, it is unclear how the Federal Court will deal with this question (applying Canadian law).

Issues surrounding AI authorship, such ownership of AI-generated works and an AI’s ability to assign or waive copyright, highlight the need for IP law to adapt to questions posed by novel technology.

A complete copy of the Notice of Application is available here.

MyCIPO Patents was launched by the Canadian Intellectual Property Office on July 17.  MyCIPO Patents is CIPO’s new online portal for patent services.  MyCIPO Patents is part of CIPO’s Next Generation Patents initiative to modernize its patent IT systems.

For now, MyCIPO Patents only allows for the filing of Patent Cooperation Treaty national phase entry applications and the payment of maintenance fees. Further functions are forthcoming. For example, MyCIPO Patents will eventually include functionality for accessing the CIPO patent database, filing of regular applications and divisional applications and submitting communications on existing applications.

Notably, since CIPO is migrating data to MyCIPO Patents, the CIPO patent database is currently unavailable and the issuance and grant of patents is suspended.

More information is available from CIPO here, here, and here.

The Federal Court has issued a permanent injunction against a series of unidentified John Does as a result of an effort by a number of broadcasters to combat unauthorized streaming of live sporting events. This case is a continuation of a series of cases brought by broadcast rights holders against such unauthorized streaming.

The Court granted the broadcasters two remedies. The first remedy was a permanent injunction against the John Does to not infringe a specified list of works (comprising a number of live sporting events). This was a wide injunction, with the list being modifiable to add new works. The broadcasters had requested the ability to add works without requiring approval of the Court, which was refused. The order instead allows the broadcasters to add to the list by bringing appropriate motions before the Court.

The second remedy was a mandatory injunction against certain internet service providers (ISPs). This injunction (which was largely unopposed by the ISPs) requires the ISPs to actively block a list of IP addresses carrying the unauthorized streams. This list may be updated from time to time by the broadcasters without requiring a court order.

Click here to read the full decision.

Bill 96, enacted in June 2022, introduced significant changes to the Charter of The French Language regarding the use and prominence of non-French language trademarks on store signage, product packaging, and advertising and increased penalties for non-compliance with the new provisions.  The strict approach of Bill 96 with respect to non-French trademarks, exempted only registered trademarks from translation into French.

On 26 June 2024 the Quebec Government published final amendments to the Regulation respecting the language of commerce and business which addressed some of the concerns regarding this limited exemption from translation, adding pending applications to the definition of registered trademarks.

A further significant clarification introduced through these Regulations relates to the translation requirements for product packaging.  The Regulations provide that a common law trademark (not only a registered trademark) need not to be translated, if no corresponding French version of the common law mark appears on the Canadian Trademarks Register. The Regulations further exclude from the translation requirements any business and product names.

The Regulations, however, maintain requirements that generic or descriptive terms that are part of the non-French trademarks be translated and that the translation must appear on the product or on a medium permanently attached to the product. This requirement applies equally to registered and common-law trademarks.

Although the Regulations provide guidance and some clarity regarding the amendments to the Charter, it remains to be seen how the Office québécois de la langue française (OQLF) will apply the amendments and the exceptions from translation when product names contain descriptive or generic text.

Proposed amendments to the Trademarks Regulations to support and implement certain amendments made to the Trademarks Act were recently published in the Canada Gazette. The amendments to the Act already received royal assent in late 2018 but have yet to come into force. Together with these amendments to the Act, the amendments to the Regulations would allow for cost awards, case management, and confidentiality orders in proceedings before the Trademarks Opposition Board (TMOB) and for the Canadian Intellectual Property Office to indicate that an official mark holder is not a public authority or has ceased to exist.

The goal of these amendments is to allow TMOB proceedings to be carried out more efficiently and cost-effectively and to make it potentially easier to overcome objections based on the citation of official marks.

Find the Regulatory Impact Analysis Statement and the proposed text of the amendments to the Regulations in the Canada Gazette Part 1, Volume 158, Number 23. 

An application for leave to appeal the decision in Steelhead LNG (ASLNG) Ltd.. v. ARC Resources Ltd. (2024 FCA 67) was recently filed by Steelhead LNG (ASLNG) Ltd. (“Steelhead”) in the Supreme Court of Canada (SCC).

In the Federal Court of Appeal (FCA) decision, the FCA upheld the Federal Court’s finding that section 42 of the Patent Act requires physical use of the invention and that “using the goal, purpose or advantage of an invention for commercial benefit” is insufficient to constitute “use” in the context of infringement. Accordingly, the FCA held that Arc’s alleged act of “disclosing to prospective business partners and stakeholders, as a proof of concept, drawings, specifications and cost estimates of a design which, if ever built, would allegedly infringe the patent”, did not constitute use of the invention in the context of infringement.

If leave to appeal is granted by the SCC, the SCC would have an opportunity to consider and clarify the meaning of “use” in the patent infringement context.

Read the FCA’s decision here. View the Supreme Court of Canada case information for this leave to appeal application here.

In F.I.A.L. Finanziaria Industrie Alto Lario, S.P.A. v. Galperti SRL, 2024 FC 976, the Applicant successfully appealed a decision of the Trademarks Opposition Board granting an opposition against its GALPERTI trademark application.

In granting this appeal, the Federal Court affirmed the principle that it is not fatal for a date of first use claimed in a trademark application to be later than the actual date of first use of the trademark. As such, while the Applicant claimed a date of first use of 1999 in its application, it was able to rely on evidence of use of its GALPERTI mark from as early as 1986 to overcome the opposition based on a confusingly similar mark used as early as 1991.

Notably, the Applicant relied on affidavits of retired employees which did not include any corroborative documentary evidence. Despite the lack of documentary evidence, the Court found that the affidavits were sufficient as both affiants were “retired and the evidence does not show that they have any stake or conflict of interest to be anything other than truthful in their affirmations.”

Click here to read the full decision.

As of 14 June 2024, CIPO has revised its position that designs applied to buildings and structures constructed on site are not registrable as industrial designs.

Historically, CIPO was of the view that designs applied to buildings and structures were not registrable as they were not finished articles to which designs could be applied. Previous versions of CIPO’s Industrial Design Office Practice Manual (the “IDOP”) stated that “to be registrable, these designs must be applied to buildings or structures capable of being preformed, portable and delivered separately to purchasers as finished articles, or in sections to be put together by a simple operation such as bolting.”

After the change, CIPO considers buildings and structures (including buildings and structures constructed on site) as acceptable finished articles to which designs can be applied.

The revised practice is applicable to all pending applications regardless of when they were filed. Note that applications for registration of a design applied to a building or structure must still meet all other requirements for registrability under s. 7 of the Industrial Design Act.

More information is available in section 13.02.03.04 of the current version of the IDOP.