Asian Applicants Filed more than Half of all International Patent Applications in 2018

The World Intellectual Property Office (WIPO) announced that, for the first time, more than half of all international patent applications were filed by Asian applicants in 2018. At a country level, US-based inventors filed the most applications, followed closely by China and Japan. For more information, see the announcement by WIPO.

WIPO’s Patent Cooperation Treaty (PCT) passed a record-breaking quarter-million (253,000) filing mark in 2018, a 3.9% increase over 2017, while WIPO’s Madrid System saw 61,200 international trademark applications, a 6.4% increase. WIPO’s Hague System for industrial designs saw 3.7% growth in 2018, reaching 5,404 applications.

 

Government of Canada’s Commitment to a more Inclusive Intellectual Property System

Today, on World Intellectual Property Day, the Minister of Innovation, Science and Economic Development launched a number of new initiatives which are aimed at making Canada’s intellectual property system more inclusive, specifically, to facilitate the public in recognizing the relationship between intellectual property and the protection of indigenous knowledge and cultural expressions. Notably, the CIPO launched a new webpage entitled “Indigenous Peoples and Intellectual Property” where details of the initiatives, and other information, tools and events related to intellectual property and indigenous knowledge and cultural expressions can be found. A detailed news article discussing this launch can be found here.

Canada Participates in Digital Access Service for E-exchange of Industrial Design Priority Documents

On 1 April 2019, Canada joined the World Intellectual Property Organization’s Digital Access Service (DAS) for industrial design applications. This means that submitting priority documents has become simpler and more efficient for industrial design cases. An applicant having a Canadian application with a priority claim based on an application filed in participating jurisdictions, such as the United States, China, India, Korea and Spain, may request that such priority documents be made available electronically to CIPO through DAS. Likewise, Canadian applicants who file first in Canada can request the offices in such countries to obtain the certified copy of the priority Canadian application electronically through DAS.  For more information, see CIPO’s news release.

WIPO Releases New AI-Based Image Search Tool for Trademarks

WIPO has added a new AI-based image search tool for trademarks to its Global Brand Database.  The tool leverages deep neural networks together with existing figurative element classification data, and the search functionality covers nearly 38 million individual trademark records from 45 different trademark offices.  WIPO expects that the new AI-based tool will improve as additional trademark offices add their records to the Global Brand Database, as this will result in a larger data pool.

Read the full press release here.

Federal Court of Appeal Decision Clarifies the Meaning of “Normal Course of Trade”

Use is an important concept in Canadian trademark law. The watchword is “use it or lose it”. After three years of registration, a trademark registration may be expunged for non-use if the trademark is not used in the “normal course of trade.”

Last year, the Federal Court of Canada cancelled the registration of the trademark LUSH in association with t-shirts for non-use: 2018 FC 63. The court held that sales of t-shirts to employees bearing the LUSH mark did not constitute use of the mark in the normal course of trade (at para. [20]):

I find that in the circumstances of this case, given the absence of profit, the promotional and de minimis nature of the sales to employees, and the fact that the Respondent is not normally in the business of selling clothing, the Registrar’s determination that these sales were ‘in the normal course of trade’ is unreasonable. 

Further, the Court held that in the absence of any profit, the sales of t-shirts to employees were only promotional use and not in the normal course of trade (at para. [24]):

in the absence of evidence of profit, it is difficult to see what purpose these sales could serve other than promotion of Lush Canada’s primary business and charitable campaigns, except perhaps as a favour to employees and their families. However, this could hardly be considered use in the normal course of trade.

In a more recent decision, the Federal Court of Appeal disagreed and clarified that the normal course of trade does not require a trading profit be made: 2019 FCA 48. The court held that a trademark may be used in the normal course of trade even if the transfer of trademarked goods was made without any actual profit. An actual profit requirement would be inconsistent with the principle that normal course of trade is not synonymous with commercial success (at para. [22]). Further, the court reasoned that an actual profit requirement would mean that common business practices of selling last year’s trademarked goods at a discounted price may not constitute normal course of trade, which is contrary to the intention behind trademark law (at para. [22]). 

Instead, the Court held that the normal course of trade requires the pursuit of an ultimate profit-making purpose through the transfer of the trademarked goods (at para. [29]). A trading profit is not required, but it can be a relevant factor when determining if the transfer of trademarked goods was made for the pursuit of an ultimate profit-making purpose.

Despite the fact that Canadian trademark law will undergo significant changes this summer, use remains relevant. Use has a technical meaning in trademark law and the Federal Court of Appeal decision provides some clarity to the meaning of use in the normal course of trade so that registrants know how to “use it” and not “lose it”.

 

Oyen Wiggs Congratulates UBC Team for Performance at Oxford International IP Moot

Every March, talented law students from all over the world travel to the UK to compete in the Oxford International Intellectual Property Law Moot. Oyen Wiggs was proud to sponsor the team from the Allard School of Law at the University of British Columbia (UBC) again this year.

We also offer our congratulations to the UBC team—represented by Emily LeDue, Dylan Braam, and Kevin Wang—for their outstanding performance in the oral rounds and for taking home the Powell Gilbert prize for 2nd best written submissions.

Tom Bailey, a partner at the firm, helped to coach the UBC team and mentor them throughout the process. When the moot’s problem was released in September, Tom helped the UBC law students to develop their strategy. The questions for this year’s moot focused on trademark law and involved the fictitious country of Shangri-La.

Tom continued to mentor the UBC team in Oxford, where they argued exceptionally well. After securing a 3-1 record against the University of Oxford, the University of Bern, the University of Colombo (Sri Lanka), and Tsinghua University, the UBC team advanced to the quarter-finals to compete against City, University of London.

The quarter-final moot was remarkably well-argued, with the judges awarding the quarter-final to City. The team from City then went on to win the final moot prize.

Oyen Wiggs is proud to have played a role in supporting the UBC team and developing the next generation of IP talent.

“The team’s outstanding performance would not have been possible without Tom’s help and guidance.” –Dr. Graham J. Reynolds, Associate Professor, Peter A.  Allard School of Law

In addition to Tom’s serving as co-coach, Jennifer Marles, a partner  with the firm volunteered her time as a guest judge.

We’re also thrilled to announce that a member of the UBC team, Kevin Wang, will be joining us as a summer law student this year.

Canada Accedes to Three Trademark Treaties, Federal Government Tables 2019 Federal Budget

On March 19, 2019, Canada formally acceded to three trademark treaties: the Singapore Treaty on the Law of Trademarks, the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, and the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement).

The legislation implementing these treaties into Canadian law is set to come into force alongside these treaties on June 17, 2019.

On the same day, the federal Liberal government tabled their 2019 budget. In addition to continuing programs initiated in 2017 and 2018, such as the Canadian National Intellectual Property Strategy, the budget proposes to provide increased funds to Natural Resources Canada and the Strategic Innovation Fund. The funds for Natural Resources Canada are intended to be directed to investment in the bioeconomy sectors with an apparent emphasis on forestry products. The funds for the Strategic Innovation Fund are intended to be invested in developing cleaner processes within the oil and gas sectors such as reducing water use and improving wellsite remediation.

For more information about Canada’s accession to the trademark treaties, see here.

For more information about some of the changes in Canadian trademark law that will be coming into effect on June 17, 2019, see here.

For more information about the federal Liberal 2019 budget, see here.

European Parliament Approves New Copyright Directive

A new European copyright directive recently passed on Tuesday (March 26, 2019) despite strong opposition led by Google. The directive is best known for two provisions it contains: Articles 11 and 13.

  • Article 11 is referred to as the “link tax”, which gives publishers the right to ask for paid licenses when online platforms (e.g. Google News) share their content.
  • Article 13 is referred to as the “upload filter”, which requires websites hosting user-generated content (e.g. YouTube) to take active measures to prevent unauthorized copyrighted material from being uploaded. Failure to do so carries the penalty of being held liable for their users’ infringement.

These controversial measures of the new copyright directive aim to level the playing field in the contemporary web: internet giants such as Facebook and Google make significant amounts of money from providing access to content made by others, while content creators themselves get less and less.

The full text of the EU Directive can be found here (Articles 11 and 13 published as Articles 15 and 17, respectively, in the final version)

Competition Bureau Publishes Updated IP Guidelines

On 13 March 2019, the Competition Bureau (the “Bureau”) published its updated Intellectual Property Enforcement Guidelines (the “IPEGs”) to reflect case law development and legislative amendments. For example, the updated IPEGs reflect amendments to the Patented Medicines (Notice of Compliance) Regulations.

The IPEGs describe the Bureau’s general approach to the interface between competition policy and IP rights. In this regard, the IPEGs include hypothetical examples describing how the Bureau applies its analytical framework in the context of IP.

Qualcomm Wins Jury Trial against Apple for Patent Infringement

A federal court jury in San Diego has awarded Qualcomm Inc. (“Qualcomm”) $31 million in damages against Apple Inc. (“Apple”) in a patent infringement dispute. The jury held that Apple violated three of Qualcomm’s patents which allow iPhones to connect more quickly to the internet, download data faster, and save battery.

It will be interesting to see how this decision impacts the bigger upcoming trial between the two companies over royalty payments. Read more here.

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