A color can function as a trademark to distinguish one’s products from those of others in the marketplace. Under certain circumstances, colors can be protected as registered trademarks. An example registered color mark is TMA810294 for Christian Louboutin’s red soles for women’s high-heel shoes. Generally speaking, a color mark can be registered in connection with certain goods and/or services if the color mark has become distinctive, i.e. that the mark has acquired secondary meaning as a source identifier, at the filing date. In a recent interview with Artisan Distillers Canada, George Kondor, Q.C., a partner of Oyen Wiggs, explains color marks in the context of blue gin. The interview can be found here.
Further COVID-19 Extensions Announced by CIPO
The CIPO has recently announced a seventh COVID-19 extension for any deadlines fixed under the Patent Act, the Trademarks Act and Industrial Design Act in the period of time beginning on July 6, 2020 and ending on July 17, 2020 (inclusive). This extension of time is granted in addition to the previous extensions granted for deadlines which fall between March 16, 2020 and July 3, 2020. All deadlines falling between March 16, 2020 and July 17, 2020 (inclusive) are now effectively extended until July 20, 2020. For more information on further COVID-19 extensions which may become available, visit here.
Oyen Wiggs welcomes Nicholas Garner
Oyen Wiggs is pleased to welcome Nick Garner to the firm as Senior Counsel. Nick brings with him a wealth of experience as a practicing lawyer in Intellectual Property for the past 14 years with a local firm. Nick is both a patent lawyer and professional engineer with particular expertise in preparing and prosecuting patent applications for inventions within the mechanical arts. Nick’s clients range from individual inventors and start-ups to established companies with a global presence. With his background and experience, we are excited to have him join our professional team.
US Supreme Court Issues Surprising Decision in Trademark Case
In a surprising decision, the US Supreme Court has ruled 8-1 that adding “.com” to an otherwise generic word can make the combination eligible for trademark protection. In this case, the US Patent and Trademark Office (“USPTO”) had rejected the trademark “booking.com” as being generic. However, reasoning that the term “booking.com” as a whole would not otherwise have meaning to consumers, the US Supreme Court overturned the USPTO’s rejection and opened the door for the registration of other so-called “generic.com” trademarks.
A copy of the decision is available here.
Federal Court Rules in Favour of Bombardier in Snowmobile Patent Infringement Suit
In previous Federal Court and Federal Court of Appeal proceedings concerning alleged infringement of four Bombardier patents, the courts ruled that three of the Bombardier patents were invalid and that a fourth one of them was infringed. The current decision involves a discussion of the validity of that fourth patent and appropriate remedies.
The defendant, Arctic Cat, sought to argue that because the counterpart of the fourth patent was declared invalid in the United States, the Canadian courts were precluded from deciding otherwise because the issue had already effectively been finally determined between the parties. The Federal Court rejected this argument as determinations of patent validity in foreign courts cannot be relied on in Canada to prevent litigation of issues to be determined under Canadian law.
Arctic Cat further argued that Bombardier’s patent was invalid because a third-party ice race sled placed on public display disclosed the claimed invention. However, the Court also rejected this argument because the essential elements of the invention were not apparent merely by visual inspection of the displayed sled. Accordingly, the subject matter of Bombardier’s patent was not ‘enabled’ by this display and so the patent was valid.
Turning to the issue of remedies, the Court awarded Bombardier a 50% split of Arctic Cat’s profits attributable to the infringed patent (totaling almost $3 million) and a permanent injunction preventing Arctic Cat from producing infringing products in the future.
A copy of the decision in Bombardier Recreational Products Inc. v. Arctic Cat, Inc., 2020 FC 691, is available here.
USPTO Announces Expedited Trademark Examination Program for COVID-19 Products and Services
The United States Patent and Trademark Office (the “USPTO”) has launched a new program allowing qualifying Applicants to request expedited examination of their trademark applications. To qualify, the trademark application must be for a mark that will be used in association with a COVID-19 related medical product or service. Such products or services must be for the treatment and/or prevention of COVID-19. This program does not apply to products that are not subject to US FDA approval.
Read more here.
Congratulations to Roni and Nikki
Congratulations to Roni Jones and Nikki Alexis who were married on Friday, June 19th through the City of Vancouver’s micro wedding program. We wish you both a lifetime of happiness.
CIPO Announces Further Deadline Extensions Responsive to COVID-19
On June 9th, the Canadian Intellectual Property Office (“CIPO”) published an updated notice that in response to the COVID-19 pandemic, deadlines falling between March 16th and July 3rd are extended to July 6th. Such deadlines include deadlines for responding to Examiner’s Reports, renewal deadlines, and any other deadline that is fixed under the Patent Act, Trademarks Act, or Industrial Design Act. This is the sixth such deadline extension that CIPO has provided to support and assist patent applicants and owners during this unprecedented time.
USPTO Launches IP Marketplace Platform
The United States Patent and Trademark Office (“USPTO”) has recently launched a web-based Intellectual Property marketplace platform named “Patents 4 Partnership”. The IP marketplace platform provides a centralized database for patent owners to list U.S. patents and publications that are available for licensing, and for potential licensees to search for available technologies. The initial release of the platform focuses on listing technologies related to the prevention, diagnosis, and treatment of COVID-19, but the USPTO has indicated that the platform may be expanded to include other technologies in the future.
Click here to read the news release, and here to access the Patents 4 Partnership platform.
USPTO Announces Prioritized Examination Pilot Program for COVID-19-Related Patents
The USPTO recently announced a new Prioritized Examination Pilot Program for COVID-19-related patents. Under this new program, applicants which qualify for small or micro entity status will be entitled to prioritized examination at discounted fees and can receive a final disposition from the USPTO within six months. To qualify for this program, the application must claim a product or process that is subject to FDA approval for use in the prevention and/or treatment of COVID-19.
Read more here.
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