Taiwan Amends Copyright Act

The Taiwanese government passed a series of amendments to update its Copyright Act in April and July of 2022. The amendments were part of a series of changes to Taiwan’s intellectual property laws to comply with the regulations under the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP).  The CPTPP is a free trade agreement among a number of Pacific nations, including Canada, Australia, Mexico, and Japan. With the amendments, Taiwan moves one step closer to joining the CPTPP.

The April amendments include cracking down on digital piracy by making instances of digital piracy constituting serious infringement offences that are indictable without complaint.  The amendments also include reductions in penalties for optical disc piracy, which is no longer considered to be a major area of copyright infringement.

The July amendments are meant to facilitate distance and digital learning by providing, among other features, fair use rules for copyrighted materials in distance learning.

More information on the amendments is available here.

USPTO Becomes WIPO GREEN Partner

The United States Patent and Trademark Office (“USPTO”) recently became a technology partner to WIPO GREEN,  the global green-technology platform of the World Intellectual Property Office (WIPO). WIPO GREEN connects providers and seekers of environmentally friendly technologies and organizes acceleration projects, conferences and international events that highlight the availability of green technologies.

Read the announcement and learn more about WIPO GREEN here.

Stricter Product Packaging and Signage Requirements for Trademarks in Quebec are on the Horizon

The National Assembly of Quebec recently adopted Bill 96, An Act respecting French, the official and common language of Québec, which includes amendments to the Charter of the French Language (the “Charter”) directed to the use of registered trademarks on product packaging and public signage.

Changes introduced by the legislation with respect to registered trademarks include:

  • Amending to insert s. 51.1 of the Charter to require that, for product packaging that includes generic or descriptive words as part of a registered trademark, those descriptive or generic words “appear in French on the product or on a medium permanently attached to the product”.
  • Amending to insert s. 58.1 of the Charter to require that, for exterior public signage (i.e. those “visible from outside premises”), registered trademarks in a language other than French be accompanied by “markedly predominant” French wording.

At present, the changes are slated to come into force on 1 June 2025.

View the text of the adopted Bill here.

Oyen Wiggs welcomes Leslie J. Chan

Oyen Wiggs is pleased to announce that Leslie J. Chan has joined the firm as an Associate lawyer after summering and articling with the firm.  Leslie assists clients with all aspects of identifying, protecting, and benefiting from their intellectual property, with a particular emphasis on preparing and prosecuting patent applications in the life science field and other related fields.

Elvis Presley making headlines again

Within the last few weeks, Elvis Presley came back into the public’s attention for several reasons.

Elvis, a biographical musical film based on the life of Elvis Presley premiered at Cannes Film Festival on May 25, 2022 followed by theatrical releases in Australia on June 23, 2022 and United States on June 24[1].

In the IP world, Elvis’ name came back front page as Authentic Brands Group (ABG), the owner of the ELVIS and ELVIS PRESLEY trademarks, started a campaign to protect their rights in the trademarks.

Despite being the owner of the ELVIS and ELVIS PRESLEY trademarks since November 2013, only in May, 2022 ABG sent cease and desist letters to several wedding chapels in Las Vegas demanding that they discontinue use of “Elvis Presley’s name, likeness, voice image, and other elements of Elvis Presley’s persona in advertisements, merchandise, and otherwise.”[2] In a follow up statement, ABG indicated that it is not their intention to shut down the chapels, but they are “seeking to partner with each of these small businesses to ensure that their use of Elvis’ name, image, and likeness are officially licensed and authorized by the estate, so they can continue their operations.”  It appears that some of the wedding chapels are already negotiating license agreements with ABG.[3]

ABG also took steps to oppose a US trademark application for ELVIS SMART filed by WBM, LLC.  The application covers a variety of toilet paper and paper towel products.  In the Notice of Opposition filed June 14, 2022, ABG claims that the ELVIS SMART trademark is confusingly similar to their ELVIS and ELVIS PRESLY registered trademark and use of the ELVIS SMART trademark is likely to falsely suggest a connection with Elvis Presley and it will likely cause confusion, mistake or deception[4].  WBM has yet to answer to the Notice of Opposition.

It remains to be seen whether ABG will be successful in their attempts to protect the ELVIS brand.

 

[1] https://en.wikipedia.org/wiki/Elvis_(2022_film)

[2] https://www.reviewjournal.com/entertainment/entertainment-columns/kats/vegas-chapels-all-shook-up-by-elvis-likeness-crackdown-2584838/

[3] https://www.cnn.com/travel/article/vegas-wedding-chapels-elvis-impersonators/index.html

[4] https://ttabvue.uspto.gov/ttabvue/v?pno=91276753&pty=OPP&eno=1

UK IP Office Issues Guidance on AI-Devised Inventions

The United Kingdom Intellectual Property Office has announced that for the time being artificial intelligence (AI) systems will not be recognized as inventors of patentable inventions in the UK and therefore no changes to UK patent law in relation to this will be made. The predominant view is that “AI is not yet advanced enough to invent without human intervention”. However, the Office appears open to reconsidering this issue at a later date.

Read more here.

Copyright Litigation Round-Up: Top Gun: Maverick Comes Under Fire and a Blue Christmas in June for Mariah Carey

Two high-profile cases of alleged copyright infringement were initiated in the United States this month.

First up, the family of Ehud Yonay is suing Paramount Pictures for alleged copyright infringement regarding the recently released Top Gun: Maverick. Yonay wrote a 1983 article entitled “Top Guns” on which the original 1986 Top Gun movie was partly based.  The Yonays claim that Paramount Pictures lost the rights to the article by notice of termination in 2020.  Top Gun: Maverick was initially slated to release in 2019 but was delayed to 2022, due at least in part to the COVID-19 pandemic.  The suit claims non-specified damages, including profits from the new movie.

Elsewhere, songwriter Andy Stone of the band Vince Vance and the Valiants is suing Mariah Carey and co-writer Walter Afanasieff for alleged copyright infringement over Carey’s 1994 “All I Want for Christmas is You.” Vince Vance and the Valiants released a song having the same title in 1989.  Apart from both songs containing the line “All I want for Christmas is you”, the songs have different lyrics and melodies.  The suit claims damages of USD $20 Million.

For more on the Top Gun case, please see here.

For more on the Carey-Stone case, please see here.

Federal Court reaffirms purposive construction over problem-solution approach

On June 17, Justice Gagné of the Federal Court of Canada (the “Court”) reaffirmed the purposive construction approach over the problem-solution approach for assessing patentability in the decision of Benjamin Moore & Co. v. Attorney General of Canada, 2022 FC 923.

The Intellectual Property Institute of Canada (“IPIC”) intervened on behalf of the appellant, Benjamin Moore & Co. IPIC submitted that the Canadian Intellectual Property Office (“CIPO”) continuously misapplied the law set out by the Court and therefore warranted the Court’s intervention.

Specifically, IPIC proposed, and the Court adopted in its judgement, the following framework for assessing the patentability of computer-implemented inventions:

a) Purposively construe the claim;

b) Ask whether the construed claim as a whole consists of only a mere scientific principle or abstract theorem, or whether it comprises a practical application that employs a scientific principle or abstract theorem; and

c) If the construed claim comprises a practical application, assess the construed claim for the remaining patentability criteria: statutory categories and judicial exclusions, as well as novelty, obviousness, and utility.

It remains to be seen how CIPO would react to this decision.

See the full text of the decision here.

Federal Court expunges trademark registration for bad faith

The Respondent Wei Meng obtained a registration for the mark “JU DIAN & Design” (depicted below), in association with “restaurant services; take-out restaurant services” and “beer”.

 

 

The Applicant Beijing Judian Restaurant Co. Ltd. owns and operates two restaurants in BC and a chain of well-known restaurants in China, through which it has used a family of Ju Dian character trademarks, including one identical to the above “JU DIAN & Design” mark.

The Applicant sought to expunge the Respondent’s registration on the basis that is was obtained in bad faith, contrary to the new section 18(1)(e) of the Trademarks Act.

The Court found that the mark was registered without a legitimate commercial purpose, constituting bad faith. The evidence showed that the Respondent registered the mark with the intention of extorting money from the Applicant or using the Applicant’s reputation to obtain money from others. The Respondent approached the Applicant to purchase the mark for $1.5M. Further, the Respondent posted a public ad offering the mark for sale, and in correspondence with a would-be purchaser, relied on the Applicant’s reputation to justify the significant cost requested.

Read the full decision here.

Review Your Canadian Patent Portfolio before October 3, 2022: Upcoming Changes to the Canadian Patent Rules

Christina Kwok

Changes to the Canadian patent regime will come into force on October 3, 2022. The most significant changes include the introduction of (i) excess claims fees and (ii) a request for continued examination procedure with related fees.

These changes will not affect currently pending Canadian patent applications for which examination has already been requested. For currently pending Canadian patent applications for which examination has not yet been requested, these new fees can be avoided by filing a request for examination before October 3, 2022.

Excess Claims Fees

Currently, no excess claim fees are payable. For patent applications in which examination is requested on or after October 3, 2022, an excess claim fee of CAD $100[1] per claim in excess of 20 will be payable at the time of requesting examination and/or at the time of paying the final fee.

The fee is based on the number of claims in excess of 20 that is included in an application at any time during the period between the day after the request for examination is made and the day the final fee is paid.

For example:

An application includes 26 claims at filing. A voluntary amendment is filed to reduce the number of claims to 24 before or at the time of filing a request for examination. During examination of the application, in response to a first office action, the applicant replaces the claim set containing 24 claims with a first amended claim set which includes 30 claims. In response to a second office action, the applicant replaces the first amended claim set containing 30 claims with a second amended claim set containing 25 claims. The second amended claim set containing 25 claims is allowed by the examiner.

In this example, an excess claim fee of CAD $400 (4 excess claims) must be paid at the time of requesting examination. An excess claim fee of CAD $600 (10 excess claims based on the greatest number of claims included in the application at any time between requesting examination and paying the final fee – 4 excess claims paid for at the time of requesting examination = 6 excess claims remaining to be paid for) must be paid at the time of paying the final fee.

Unlike the U.S. patent regime in which excess claims fees apply in applications in which more than three independent claims, more than twenty total claims, or a multiple dependent claim are present, the new Canadian regime does not differentiate between independent and dependent claims. Both independent and dependent claims count as one claim. Also, a dependent claim that refers to more than one preceding claim counts as one claim under the new Canadian regime.

Request for Continued Examination

Currently, no additional examination fees are payable after the initial fee is paid at the time of requesting examination. For patent applications in which examination is requested on or after October 3, 2022, applicants will be required to file a request for continued examination and pay the prescribed fee of CAD $816[2] to respond to the third office action, and every second office action thereafter.

Failure to file a request for continued examination and the prescribed fee when required will result in abandonment of the application.

Other Notable Changes

The amendments to the Patent Rules also introduce the following:

  • Conditional notice of allowance. If an examiner considers that an application is allowable subject to certain minor defects, then the examiner will issue a conditional notice of allowance. The applicant will have four months to file a response by making those amendments and/or submit arguments, along with payment of the final fee.
  • Remedies for delayed receipt of office action caused by the CIPO. The deadline to file a response to an office action is four months from the date of the office action. In the event that the applicant receives an office action more than one month after the date of the office action, the applicant can apply to request for an extension of time of up to six months, without payment, if the applicant (a) applies for the time extension within 14 days after receiving the notice and (b) provides evidence satisfactory to the Commissioner of the date of receipt of the office action.
  • Changes to the Format of Sequence Listing. For applications filed on or after July 1, 2022, any sequence listings included in the application must comply with the World Intellectual Property Organization (WIPO) Standard ST 26 (ST.26) format. For applications filed before July 1, 2022, sequence listings may either comply with the ST.26 format or the previous ST.25 format.

[1] This is the standard entity fee. The small entity fee is CAD $50.

[2] This is the standard entity fee. The small entity fee is CAD $408.

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