In Galderma Canada Inc. v. Canada (Attorney General), 2024 FCA 208, the Federal Court of Appeal (FCA) confirmed that the Patented Medicine Prices Review Board (PMPRB) does not have jurisdiction over unpatented medicines.

In this decision, the FCA considered the test of when a particular patent applies to a medicine (i.e. making it a patented medicine). Specifically, an invention in a patent may be said to cover a medicine when the invention is “intended or capable of being used for” the medicine or for the preparation or production of the medicine. However, the FCA clarified that this test should not be interpreted as expanding the PMPRB’s jurisdiction to include unpatented medicines, even if an existing patent might relate to the medicine in question.

The case at hand involved the PMPRB’s decision that the patent for DIFFERIN XP (relating to the use of 0.3% adapalene) covered the unpatented 0.1% adapalene product, DIFFERIN, due to clinical similarities between the two formulations (DIFFERIN was previously a patented medicine, but the patent had expired). The PMPRB initially asserted jurisdiction over the DIFFERIN product, requiring Galderma Canada to provide pricing and other information regarding DIFFERIN. The Federal Court upheld the PMPRB’s decision, finding it reasonable. However, the FCA ultimately set aside the PMPRB’s decision, reinforcing the limits of the PMPRB’s jurisdiction to patented medicines only.

The full case can be found here.

Proposed amendments to the Patent Rules implementing patent term adjustment are scheduled to come into force on 1 January 2025.

These amendments were first published for consultation in the Canada Gazette, Part I on 18 May 2024, and now “Regulations Amending the Patent Rules and Certain Regulations Made Under the Patent Act” have been registered in the Canada Gazette, Part II under SOR/2024-241 to formally amend the Patent Rules.

In brief, the patent term adjustment amendments provide mechanisms to adjust the term of a patent to account for certain delays during the prosecution of the patent.

For more information, please see the proposed amendments, as published for consultation in the Canada Gazette, Part I, and the registered amendments in SOR/2024-241 (PDF), as published in the Canada Gazette, Part II.

Starting in January 2025, the Trademarks Opposition Board (TMOB) will initiate a pilot project to proactively send section 45 expungement notices for a limited number of randomly selected trademark registrations. The TMOB is planning to issue 100 of such notices in January, 2025, and then 50 in each of February and March, 2025. Whether or not this practice will be continued after March, 2025 remains to be determined.

If a trademark owner receives such a notice from the Registrar, it will need to provide evidence to show use of each of the goods and services listed in the registration for the three-year period preceding the date of the section 45 notice. The registration may then be amended to remove goods and/or services for which no satisfactory evidence is provided or even cancelled if no satisfactory evidence is provided.

The motivation behind this pilot project is to ensure that the Register of Trademarks accurately reflects trademarks that are in use. The pilot project aims to assess how a Registrar-controlled mechanism performs compared to the established process of third-party initiated expungement proceedings. The Registrar will collect relevant data in relation to the pilot project and publish the data on an ongoing basis.

To learn more about the pilot project and access the various resources, visit the official pilot project webpage.

On 28 November 2024, a group of Canada’s largest news companies commenced a lawsuit against OpenAI, the owner of ChatGPT.

The Toronto Star, Metroland, Postmedia, PNI Maritimes, the Globe and Mail, Canadian Press Enterprises, and the Canadian Broadcasting Corporation (collectively the “News Media Companies”) allege that OpenAI infringed the News Media Companies’ copyright to a large number of works (including news articles), circumvented technological protection measures to access the works, breached the terms of use of the News Media Companies’ websites, and unjustly enriched themselves at the expense of the News Media Companies.

The News Media Companies are seeking damages and/or an accounting of OpenAI’s profits.

The News Media Companies’ claims of copyright infringement are predicated upon the allegation that OpenAI scrapes the News Media Companies’ websites and reproduces the copyrighted works in training datasets and Retrieval-Augmented Generation datasets, all without the consent of the News Media Companies.

Click here to read the statement of claim of the News Media Companies.

The Copyright Act currently has a general prohibition on the circumvention of “Technological Protection Measures” (TPM’s). TPM’s are defined as technologies which, in the ordinary course of their operation, control access to a work or restrict a user from exercising any of the copyright owner’s exclusive rights. An example of a TPM is the encryption of a work (e.g., a movie or software program).

Two new bills that recently received royal ascent will introduce new exceptions to TPM circumvention in Canada. These new exceptions are aimed at supporting the right to repair.

Bill C-244 introduces an exception to the prohibition on TPM circumvention if the circumvention is done “for the sole purpose of maintaining or repairing a product, including any related diagnosing” if the TPM forms part of that product.

Bill C-294 amends an existing exception to the prohibition on TPM circumvention, and permits circumvention of a TPM if it is done to make “[a] program or a device in which it is embedded interoperable with any other computer program, device or component”.

The Federal Court recently overturned a Trademark Opposition Board (TMOB) decision and ruled in favor of Blaze Pizza, LLC (“Blaze”) in its dispute with Carbone Restaurant Group Ltd. (“Carbone”). Blaze had opposed Carbone’s application for the trademark FAST FIRED BY CARBONE & Design, citing its own registration for the trademark FAST FIRE’D BLAZE PIZZA & Design and its use of various similar trademarks. The TMOB found that there was no likelihood of confusion between the trademarks and that Blaze’s evidence of its use of FAST FIRE’D was insufficient. In the appeal before the Federal Court, Blaze introduced new evidence, including evidence of its extensive use of “FAST FIRE’D” in branding, such as its prominent display on pizza boxes.

The Federal Court reviewed the TMOB’s decision on a de novo basis, holding that the new evidence introduced by Blaze would have materially impacted the TMOB’s decision. The Federal Court ultimately ruled that, in view of the evidence, Carbone had not met its onus of establishing that it was entitled to registration or that its trademark was distinctive of Carbone. Accordingly, Carbone’s trademark application was refused.

This decision underscores the importance of evidence in trademark disputes before the TMOB and the Federal Court.

The full case can be found here.

Both the Canadian Intellectual Property Office (CIPO) and the College of Patent and Trademark Agents (CPATA) have issued notices warning of recent fraudulent phishing emails targeting members of the public in North America, including business and trademark owners.

Common characteristics of the phishing emails include that the email:

• comes from an unknown sender, often purporting that the sender is an intellectual property professional;
• references an urgent trademark infringement;
• includes personal information such as the recipient’s name or business name;
• urges the recipient to contact the sender promptly; and/or
• outlines negative consequences if the recipient does not act quickly.

Further, some of the phishing emails have fraudulently used the names of actual registered trademark agents.

Members of the public should be wary of communications from unknown sources, reach out to their trademark agent when such communications are received, and never give personal, business or financial information to strangers.

Read CIPO’s full notice about the phishing emails here and CPATA’s full notice about the phishing emails (including examples) here.

The Federal Court recently issued a decision in Little Brown Box Pizza, LLC v. DJB, 2024 FC 1592.

Little Brown Box Pizza had appealed a decision by the Registrar of Trademarks to expunge its registration for the mark PIEOLOGY. The registration issued on February 19, 2016 and covered, among other services, “restaurant services”.

Little Brown Box Pizza filed a new affidavit in the appeal. The new affidavit asserted that several thousand unique users in Canada had visited the PIEOLOGY website operated by Little Brown Box Pizza and that at least one Canadian downloaded the PIEOLOGY mobile app. Furthermore, the new affidavit provided that the website and mobile app permitted consumers to review menus, look up restaurant locations in the United States, pre‑plan customized pizzas, save favourite pizzas for future ordering, and receive news about product offerings.

The Court was satisfied that the services available via the website and the mobile app constituted ancillary restaurant services that were intended to target Canadian consumers, even though no product could be ordered from the website and no restaurants were operating in Canada. This was sufficient to constitute use of the trademark in Canada in association with “restaurant services.”

However, the Court was not persuaded that there were special circumstances that would excuse non-use of the remaining services in the registration.

As a result, the appeal was allowed in part, and the registration for PIEOLOGY was maintained only in association with “restaurant services.”