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.
Final Countdown: Time to Prepare for Significant Amendments to Canada’s Trademark Law
Significant amendments to the Trade-marks Act were passed in 2014 and will come into force on 17 June 2019. These amendments aim to modernize Canadian trademark laws and practice, as Canada moves to accede to major international IP treaties, including the Singapore Treaty, the Madrid Protocol, and the Nice Agreement. These amendments will affect how Canadian trademark applications are filed, examined, registered and maintained. Some highlights are discussed below.
“Use” Requirement for Registration Eliminated
Currently, a trademark application may be filed on the basis of actual use, proposed use in Canada, and/or foreign registration and use abroad. A trademark application based on proposed use will not mature into a registration until the mark is used in Canada and a Declaration of Use is filed.
The legislative amendments eliminate filing grounds and commencement of “use” as a registration requirement. Thus, as of 17 June 2019, an application can be filed without specifying any filing grounds and a Declaration of Use will no longer be required for an application to mature into a registration. This means that:
- pending applications that have not been advertised before 17 June 2019 can optionally be revised to remove filing grounds; and
- pending applications for which the only outstanding formality is filing of a Declaration of Use can proceed to registration simply by paying the registration fee after 17 June 2019.
In the absence of a use requirement for registration, we expect to see increased filing activity in Canada, including more trademark troll filings. Thus appropriate defensive filings in Canada should be considered, preferably at an early date to block subsequent filings by others.
Use Still Required for Enforcement and Maintenance
Although the legislative amendments eliminate the use requirement for registration, use is still relevant. In particular, use is required to enforce a trademark registration within three years of registration. Further, after three years of registration, a registration may be expunged or restricted for non-use if the trademark is not used within any consecutive three-year period in association with all of the goods and services covered by the registration. Additionally, the lack of use in Canada or an intention to use the trademark in Canada will be a ground of opposition.
Nice Classification & Fees
Currently, applicants and registrants are not required to classify their goods and/or services according the Nice Classification. Filing and renewal fees are flat and not based on the number of Nice classes of goods and services.
The legislative amendments require that applicants and registrants classify their goods and/or services according the Nice Classification. Filing and renewal fees will be assessed on a fee-per-class basis. For example, the new filing fee will be $330 for the first class and $100 for each additional class of goods and services. This is to be contrasted with the currently flat filing fee of $250 combined with a $200 registration fee, regardless of the number of classes of goods and services.
It would be cost effective to file multi-class trademark applications before the amendments come into force on 17 June 2019 to benefit from the current flat filing fee. Similarly, payment of renewal fees prior to 17 June 2019 will allow holders of multi-class registrations to benefit from the current flat fee regime regardless of the number of Nice classes covered by their registrations, whereas payment of renewal fees after 17 June 2019 will involve higher costs for multi-class registrations.
Shortened Renewal Period
Currently, a trademark registration must be renewed every 15 years. The legislative amendments reduce this renewal period to 10 years for registrations issued after 17 June 2019, and for registrations with an effective renewal date that is after 17 June 2019. This means that, although renewal costs can be lowered by paying the renewal fees prior to 17 June 2019, if the renewal deadline is after that date, the shorter 10-year term will apply.
Madrid Protocol
As of 17 June 2019, Canada will become a member of the Madrid Protocol. The Madrid Protocol provides a centralized system for filing, registering, and managing trademarks worldwide. A single application under the Madrid Protocol can afford trademark protection in up to 119 countries.
Relaxed Requirements for Claiming Priority
After the new legislation comes into force, it will be possible to claim priority to an application filed in any country that is a party to the Paris Convention, not just the country of origin of the applicant.
Divisional Applications
The legislative amendments make it possible to divide and merge applications in Canada. This can be a useful strategy during prosecution and opposition. For example, an applicant may carve out some problematic goods and/or services that are subject to a confusion objection and include them in a divisional application while the rest of the original application proceeds to registration. When the divisional application proceeds to registration, it may be merged with the original registration so only one renewal fee applies.
Expanded Definition of “Trademark”
The legislative amendments expand the definition of trademark to include non-traditional trademarks: a sound, hologram, moving image (i.e. motion mark), scent, taste, colour per se, a three-dimensional shape, a mode of packaging goods, a texture, or a positioning of a sign. These non-traditional trademarks are registrable if they have acquired distinctiveness at the filing date of the application. During examination, Examiner will be able to make distinctiveness objections and request evidence of acquired distinctiveness in Canada. Such evidence may be filed in the form of an affidavit or statutory declaration.
Concluding Remarks
The legislative amendments will significantly change Canada’s trademark law. Applicants and registrants are encouraged to develop strategies as to how they can take advantage of the current trademark registration system and prepare for the new system.
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