On December 1, 2023, the Trademarks Opposition Board (TMOB) will implement changes regarding the Practice in trademark opposition proceedings and the Practice in section 45 proceedings.

The majority of the changes will significantly shorten the period of time for completing cross-examination and the extension period available for various steps in opposition or section 45 proceedings:

• Extension of time to file a Statement of Opposition is reduced from four months to two months;
• Extension of time to file a Counterstatement is reduced from two months to one month;
• Extension of time for either party to submit evidence, reduced from three months to two months;
• Extension of time to submit Opponent’s reply evidence is reduced from four months to one month.
• Extension of time for filing Written Representations is reduced from two months to one month.
• Requests for cooling off period to allow the parties to conduct settlement discussions will be reduced from 9 months to 7 months;
• Period of time to complete a cross-examination will be reduced from four months to two months.

Under the new Practice Notice in section 45 proceedings, the extension of time available for the owner of a registration to serve and file evidence of use will be reduced from four months to two months.

For both opposition and section 45 proceedings, a new requirement to “act promptly and diligently” has been introduced to obtain an extension based on exceptional circumstances.  The party unable to meet the deadline will have to demonstrate “a consistent overall pattern of reasonable effort, promptness and diligence in their efforts to meet the upcoming deadline”.  Example of situations that TMOB considers as qualifying as exceptional circumstances are: an inadvertent error or omission by a party or agent; inherently lengthy process of evidence preparation; unavailability of relevant deponents due to involvement in other matters, if the party has exhausted all efforts to find alternative deponents.

These changes are meant to reinforce TMOB’s efforts to improve the timelines for obtaining a hearing date or a non-hearing decision.  Trademark owners and their agents will have to work diligently to ensure that all steps are completed within the new timeframes. 

World Intellectual Property Organization (WIPO) has published the World Intellectual Property Indicators 2023 Report (the “2023 WIPI Report”). The 2023 WIPI Report provides data and statistics on trends in intellectual property filings around the world in 2022.

Global filings for patents reached a new high of 3.46 million patent applications in 2022 (a growth rate of 1.7% compared to 2021 numbers), despite global filings for trademarks and industrial designs retreating from 2021 levels (down -14.5% and -2.1% respectively).

The strong trend in patent filings was primarily maintained by Indian and Chinese innovators. Chinese innovators file nearly half of all global patent applications and their share is still growing. Patent applications by residents of India continue to grow at a blistering pace of 31.6% year over year, extending an 11-year run of sustained growth.

See WIPO press release here.

See World Intellectual Property Indicators 2023 Report here: https://www.wipo.int/edocs/pubdocs/en/wipo-pub-941-2023-en-world-intellectual-property-indicators-2023.pdf

WIPO press release: https://www.wipo.int/pressroom/en/articles/2023/article_0013.html

On 30 October 2023, US President Biden issued an executive order relating to the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence.

As part of the executive order, President Biden ordered the USPTO to publish updated guidance within 120 days relating to inventorship and the use of AI, including examples in which AI systems play different roles in inventive processes and how, in each example, inventorship issues ought to be analyzed.

The executive order also addresses the use of AI in copyright. The executive order requires that recommendations for further executive actions addressing the scope of protection for works produced using AI and the treatment of copyrighted works in AI training be provided to President Biden within the later of 270 days from the date of the executive order, and 180 days from publication of the upcoming United States Copyright Office AI Study.

Consequently, the existing US patent rules relating to the use of AI during the inventive process may change in the coming months, and the intersection of AI and copyright may be clarified in the US in 2024.

Click here to read the full executive order.

Following in the footsteps of the Voltage Pictures LLC v. Salna reverse class action launched against alleged pirates of movies (see our previous reporting on this case here); Seismotech IP Holdings Inc. and Seismotech Safety Systems Inc. (collectively “Seismotech”) have commenced a series of reverse class actions to enforce their patent rights.

Seismotech has commenced four reverse class actions, two relating to classes of defendants comprising legal persons who manufactured, distributed, or sold allegedly infringing intelligent thermostats, and two relating to classes of defendants comprising individuals who purchased allegedly infringing intelligent thermostats.

These actions appear to be the first reverse class actions brought in the patent field, and offer a novel method for patent owners to enforce method claims in a potentially economic fashion.

It remains to be seen whether Seismotech will be successful in maintaining their class actions against individual purchasers and users of the allegedly infringing thermostats. However, this case may be a warning to individuals purchasing knock-off or counterfeit products that they may not be immune to legal repercussions.

Click here for the most recent order relating to the Seismotech cases.

The Government of Canada has announced a consultation focused on potential amendments to the Copyright Act in response to the recent rapid development of generative artificial intelligence. According to the Government’s consultation paper, there are three major policy issues related to AI as it pertains to copyright. The first issue relates to the use of datasets for machine learning models and the extent to which rightsholders should be compensated for such use; the second relates to whether and with whom copyright should subsist in for AI generated works; and the third relates to liability for content created by AI that infringes copyright. The Government’s consultation paper indicates that any amendments to the Copyright Act will attempt to balance innovation and investment in AI while also attempting to support and protect Canadian creative industries.

Those wishing to provide feedback can do so via the Government’s online consultation form before December 4^th 2023.

X Social Media LLC has sued X Corp. (previously known as Twitter Inc.) after the latter’s rebrand of its social media platform from Twitter to “X” in July.

X Social Media is a Florida-based company that, through advertisements primarily on Facebook, seeks to inform consumers of potentially dangerous goods and services and connect injured consumers with legal assistance to seek redress for their injuries.  X Social Media also owns a U.S. trademark registration for the trademark X SOCIALMEDIA.

In a complaint filed 2 October 2023, X Social Media alleged that X Corp was aware of X Social Media’s activities and trademarks before adopting X in association with its own social media platform (i.e. Twitter). X Social Media argued that the adoption of X in association with the social media platform is likely to cause confusion with its trademark X SOCIALMEDIA. The complaint also includes causes of action for unfair competition and deceptive business practices under Florida law.  X Social Media seeks an injunction and treble damages.

As of date of writing, X Corp. has not filed a response.

More information may be found here.

The United States Patent and Trademark Office (the “USPTO”) issued its 1 millionth design patent on 26 September 2023. Design patent 1 million relates to a dispensing comb. Design patent 1 million comes 181 years after the issuance of the first design patent in the United States.

To learn more about it click here.

Amazon announced on 29 September 2023 that it has joined the European Union Intellectual Property Office (EUIPO) Intellectual Property Enforcement Portal (IPEP) as a business and a rights holder. The IPEP is a centralised platform for exchanging information about intellectual property rights enforcement and acts as a collaborative space for rights holders, customs officials, police, and market surveillance authorities to facilitate the identification and detection of counterfeit products.

To read more about the IPEP and Amazon joining this platform, please visit the EUIPO website here and Amazon’s press release here.

Metabyte, Inc. has sued Meta Platforms for trademark infringement and unfair competition over Meta’s use of the trademark META in association with a variety of products and services previously offered under some well-known brands as FACEBOOK, INSTAGRAM and WHATSAPP.

Metabyte is a California based technology services and staffing company which has been doing business under the name Metabyte, Inc. since 1993.  It prides itself as a company trusted by Fortune 500 companies with over 17 million users daily relying on their software and services for work or entertainment.  Naturally, all of its services are provided under the trademark METABYTE, which has been federally registered in the United States.

In the complaint filed on 22 September 2023 with the U.S. District Court for the Northern District of California, Metabyte claims that Meta has been aware of Metabyte’s prior use of the trademark METABYTE and that Meta’s goods and services overlap with those offered by Metabyte.  Metabyte further claims that Meta’s use of META as a mark is likely to cause confusion with the registered mark METABYTE.

Before Metabyte brought the lawsuit, the parties have been engaged in discussions trying to find ways to co-exist in the marketplace.  Metabyte CEO Manu Mehta stated that they “bent over backwards over the past year to settle this matter out of court.”

Notably, this is the third lawsuit brought against Meta following their October 2021 rebranding.  MetaX (a virtual reality company) and Metacapital (an investment firm) sued Meta in 2022 over their use of the trademark META.  At the same time, Meta likely acknowledged the likelihood of confusion between their META trademark and third party marks incorporating the term META as they have taken steps to oppose trademark applications for such marks.

Meta has yet to file a response to the complaint brought by Metabyte and it remains to be seen whether it will attempt to reopen settlement discussions with Metabyte or if it will simply choose to defend its position in the lawsuit

The AccelerateIP program is now accepting applications. As part of the soft launch of the program, applications for the funding will be accepted from now until October 15, 2023 for Stream 1 of the program, and October 31, 2023 for Streams 2 and 3 of the program. The program provider expects to re-commence accepting applications in January 2024.

Any startup with fewer than 500 full-time employees that is based in B.C., Yukon, Northwest Territories or Nunavut with an innovative technology may be eligible for the funding.

This program offers the following three streams:

Stream 1 – IP Education: Knowledge enhancement opportunities offered through seminars, webinars, and group programs. This initiative aims to deepen understanding of IP matters and equip businesses with the tools to create effective IP strategic plans.

Stream 2 – Strategic IP Guidance: Eligible companies may qualify for funding of up to $25,000 to facilitate IP strategy development with the assistance of IP legal experts. This funding can be used for activities such as analysis of IP landscaping, prior art searches, patentability analysis, and freedom to operate or infringement searches.

Stream 3 – IP Implementation: Businesses that have successfully navigated the strategic guidance phase can apply for funding of up to $60,000 to execute their IP strategies. This funding can be used for activities such as IP registration, which includes fees applied against drafting and prosecuting patent, trademark and industrial design applications.

It is not required to complete the streams in the order presented. The program provider will assess your company’s knowledge of IP, and approve the stream of funding as it considers appropriate. The application process will include a number of IP assessment questions for the program provider to evaluate your company’s knowledge of IP.

We invite you to reach out to us should you have any questions relating to the AccelerateIP program, or require assistance with the application process. Further details about the program can be found here.