In an attempt to appeal to millennials, Proctor & Gamble has applied to register the commonplace acronyms “LOL”, “WTF”, “NBD” and “FML” as trademarks in the United States in association with non-medicated liquid soap, dishwashing detergents, hard surface cleaners, and air fresheners. The applications are currently pending before the United States Patent and Trademark Office (the “USPTO”).
Read more here.
A class action lawsuit has been certified against an obituary website, Afterlife, after the website allegedly copied obituaries and photographs without authorization from the authors. The obituaries and photographs were allegedly copied from other online sources, such as funeral homes and newspapers.
In Canada, any literary, dramatic, musical or artistic work of skill and judgement is protected by copyright. Posting a work online does not itself waive copyright in that work. Accordingly, any unauthorized reproduction of a work subject to copyright, even if that work has been posted online, may infringe the copyright in that work.
Read more about the certification here, and one man’s story here.
Oyen Wiggs is pleased to announce that seven of our lawyers have been selected by their peers for inclusion in the 2019 edition of Best Lawyers in Canada in the field of intellectual property law.
Best Lawyers is considered to be the leading peer-review publication in the legal profession. Its rankings of lawyers and firms are based on extensive peer-review surveys in which thousands of leading lawyers confidentially evaluate their professional peers.
We are proud to announce that the following lawyers have been recognized as Best Lawyers in Canada for 2019:
The Society of Composers, Authors and Music Publishers of Canada (SOCAN), which licenses performing rights in Canada, has acquired reproduction rights organization the Society for Reproduction Rights of Authors, Composers and Publishers in Canada (SODRAC) in a non-monetary transaction.
The deal will see the operations of SODRAC transitioned into the operations of SOCAN, with a new Reproduction Rights committee of the SOCAN board being established to oversee administration of reproduction rights. This new arrangement will provide music users who need to license both public performance and reproduction rights owned by publishers with the ability to license both rights from a single organization, which has not historically been possible in Canada.
More details on the transaction are available here.
A federal jury in California has found that Apple has infringed WiLan’s U.S. Patent Nos. 8,457,145 and 8,537,757 respectively entitled “Method and apparatus for bandwidth request/grant protocols in a wireless communication system” and “Adaptive call admission control for use in a wireless communication system”. This is not the first time that WiLan has sued Apple for patent infringement. In a 2016 decision by the U.S. Court of Appeals for the federal Circuit, Apple successfully defended a separate patent infringement lawsuit brought by WiLan.
Read more here.
The European Court of Justice (ECJ, the highest EU court) decided that the Kit Kat chocolate bar shape is not entitled to registered trademark protection. To maintain its shape trademark registration, the chocolate bar’s maker Nestlé was required to provide evidence of acquired distinctiveness that covered the EU as a whole. The Court concluded that the KitKat chocolate bar shape was not sufficiently well known in Belgium, Ireland, Greece, and Portugal, although acquired distinctiveness was established in Denmark, Germany, Spain, France, Italy, the Netherlands, Austria, Finland and Sweden. More information is available from UK firm Appleyard Lees here and a copy of the EJC decision can be found here.
The US Federal Circuit has affirmed that the St. Regis Mohawk Tribe cannot use tribal immunity to shield pharmaceutical patents assigned to it by drug company Allergan from inter partes review. Allergan had assigned its rights in the patents to the St. Regis Mohawk Tribe in exchange for a license back of the assigned patents after inter parties review proceedings were initiated challenging the validity of the patents. The US Patent Trial and Appeal Board (PTAB) had previously held that the Tribe could not rely on sovereign immunity to shield the patents from inter partes review, and the Federal Circuit affirmed. A full copy of the decision is available here.
There is a paucity of comprehensive analysis on the Canadian jurisprudence that has shaped the prohibition of methods of medical treatment from patentability. Contrary to the United States, methods of medical treatment have long been considered non-patentable subject matter in Canadian patent law. The prohibition, however, is not absolute: certain cosmetic and natural condition treatments [1], medical devices [2], diagnostic methods [3], and pharmaceutical claims [4] are patentable.
Despite extensive discussion by our courts, the reasons behind why such a prohibition exists remain unclear for both courts and patent lawyers. Similarly, the distinction between non-patentable methods of medical treatment and patentable claims before CIPO is sometimes unclear. The confusion is so great that the Federal Court of Appeal recently called for a full consideration of the prohibition by the Supreme Court of Canada in Bayer Inc v Cobalt Pharmaceuticals Co [5]. Whereas some have asserted that the prohibition is variable and ever-changing [6], to the best of the authors’ knowledge, no scholarly publication currently exists that systematically reviews the entire breadth of Canadian case law concerning methods of medical treatment in the context of pharmaceutical patents up to and including 2018. After careful review of the relevant jurisprudence, it seems that while the rationale for the prohibition sits on shaky legal ground, there is a clear pattern in the way that the prohibition has been applied by the courts.
In light of the ongoing need for access to effective drugs for medical prescription in Canada, the patenting of new pharmaceutical innovation is of real use and benefit to all Canadians. Thus, this article focuses on the Canadian prohibition in the context of pharmaceutical claims in order to provide a clear understanding for patent agents and inventors alike of this confusing patent landscape, such that they may better prepare pharmaceutical patent claims that do not claim prohibited subject matter.
Have the courts ruled in an inconsistent fashion following the establishment of the prohibition on the patentability of methods of medical treatment?
To answer this question, the primary author performed a retrospective study on cases that concerned the prohibition following its establishment in the context of pharmaceutical patents on 19 November 1991 [7]. The study’s objective was to determine whether any predictable pattern to the decisions could be found.
The study yielded 12 discrete cases that fit the temporal parameters [8]. These were analyzed alongside their respective patents to look for a predictable pattern. They were also compared to the Canadian Intellectual Property Office’s (“CIPO”) revised examination practice respecting medical use claims as described by Patent Notice 2015-01 (“PN 2015-01”) which includes examples of purposive construction analysis of such claims for statutory subject-matter evaluation (“PN 2015-01 Examples”) [9]. Although practice notices do not have the force of law, they do provide a guide as to whether or not a claim will be allowed by CIPO.
Conclusion
This study reveals that the courts have not ruled in an inconsistent fashion on the patentability of methods of medical treatment despite allegations to the contrary. From a detailed analysis of the case law while considering the invention as a whole against each impugned claim, it seems that the courts have followed a logical and predictable pattern in their decisions spanning from 19 November 1991 to 7 March 2018:
Further, where applicable, the decisions matched the patentability criteria as described by PN 2015-01 and PN 2015-01 Examples. However, in spite of the apparently predictable pattern of patentability within case law decisions regarding the prohibition on pharmaceutical products, the results of this study are simplified. Accordingly, before any action is taken, legal advice on whether a pharmaceutical patent claim does, in fact, claim prohibited subject matter in Canada is recommended.
References
[1] Application for Patent Re Senentek plc, Re (1997), 77 CPR (3d) 321. [2] Visx Inc v Nidek Co (1999), 3 CPR (4th) 417. [3] CIPO Patent Notice PN 2015-02; CIPO Manual of Patent Office Practice (“MOPOP”), c 17. [4] Apotex Inc v Wellcome Foundation Ltd, 2002 SCC 77 (affirming [2001] 1 FC 495, affirming [1998] FCJ No 382) [Apotex/Wellcome/AZT]. [5] Bayer Inc v Cobalt Pharmaceuticals Co, 2015 FCA 116 (affirming 2013 FC 1061) [Bayer/Cobalt/drospirenone]. [6] For example, Professor Norman Siebrasse in his IP blog, Sufficient Description <http://www.sufficientdescription.com/>. [7] Briefly, the prohibition was first introduced to Canadian courts by Lawson v Canada (Commissioner of Patents) (1970), [1970] Ex CJ No 13, and expanded upon by Tennessee Eastman Co et al v Canada (Commissioner of Patents), [1974] SCR 111 (affirming [1970] Ex CJ No 14), shortly thereafter. The Supreme Court in Tennessee Eastman justified its endorsement of the prohibition on the basis of s.41(1) in the 1952 consolidation of the Patent Act, RSC 1952, c 203, which prohibited product claims for chemically-produced medical substances. Section 41(1) was later repealed on 19 November 1991 by Bill C-22, An Act to Amend the Patent Act and to Provide for Certain Matters in Relation Thereto, 2d Sess, 33rd Parl, 1986-1987, cl 14. From then on, pharmaceutical inventions could be directly patented as product claims. However, the prohibition on the patentability of medical methods continued in spite of the extinction of its statutory basis. As a result, this paper considers 19 November 1991 as the date that the prohibition was firmly established. This study’s parameters are thus temporally limited to relevant cases occurring after that date. [8] Merck & Co v Apotex Inc (CA), [1995] 2 FC 723 (affirming [1994] FCJ No 1898) [Merck/Apotex/enalapril]; Apotex/Wellcome/AZT, supra note 4; Merck & Co v Apotex Inc, 2005 FC 755 [Merck/Apotex/alendronate]; Pfizer Canada Inc v Apotex Inc, 2005 FC 1421 [Pfizer/Apotex/azithromycin]; Axcan Pharma Inc v Pharmascience Inc, 2006 FC 527 [Axcan/Pharmascience/ursodiol]; Sanofi-Aventis Canada Inc v Hospira Healthcare Corp, 2009 FC 1077 [Sanofi-Aventis/Hospira/docetaxel]; Janssen Inc v Mylan Pharmaceuticals ULC, 2010 FC 1123 [Janssen/Mylan/galantamine]; Merck & Co v Pharmascience Inc, 2010 FC 510 [Merck/Pharmascience/finasteride]; Novartis Pharmaceuticals Canada Inc v Cobalt Pharmaceuticals, 2014 FCA 17 [Novartis/Cobalt/zoledronate]; AbbVie Biotechnology Ltd v Canada (Attorney General), 2014 FC 1251 [Abbvie/Canada/adalimumab]; Bayer/Cobalt/drospirenone, supra note 5; Hospira Healthcare Corp v Kennedy Trust for Rheumatology Research, 2018 FC 259 [Hospira/Kennedy/infliximab]. [9] CIPO Patent Notice 2015-01 [PN 2015-01]; CIPO Examples of purposive construction analysis of medical use claims for statutory subject-matter evaluation, online: <https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03919.html> [PN 2015-01 Examples]. [10] Merck/Apotex/enalapril, supra note 8; Apotex/Wellcome/AZT, supra note 4; Hospira/Kennedy/infliximab, supra note 8. [11] Merck/Apotex/alendronate, supra note 8; Janssen/Mylan/galantamine, supra note 8; Novartis/Cobalt/zoledronate, supra note 8; Abbvie/Canada/adalimumab, supra note 8; Bayer/Cobalt/drospirenone, supra note 5. [12] Axcan/Pharmascience/ursodiol, supra note 8. [13] Pfizer/Apotex/azithromycin, supra note 8; Sanofi-Aventis/Hospira/docetaxel, supra note 8. [14] Merck/Pharmascience/finasteride, supra note 8.
By Rochelle C Leung, Summer Law Student and Jennifer A. Marles, Partner
Some Canadian law professors have suggested that the Canadian government target pharmaceutical patents owned by American companies in response to recent tariffs imposed by the US government. This could include revoking or suspending Canadian patents held by US companies. These experts point out that similar strategies have worked in the past for other countries in trade disputes with the US. Time will tell if the Canadian government decides to implement similar measures.
Read more here.
Since the Canadian Intellectual Property Office (the “CIPO”)’s release of a Practice Notice on 9 November 2016 clarifying its practice with respect to the registrability of geographical names as trademarks in Canada, applicants have faced an uphill battle registering trademarks containing a geographical name or indicator.
Paragraph 12(1)(b) of the Trade-marks Act prohibits, inter alia, the registration of a trademark that is either clearly descriptive or deceptively misdescriptive of the place of origin of the goods or services with which they are associated. The Federal Court of Appeal provided guidance in MC Imports Inc. v. AFOD Ltd., 2016 FCA 60 (“MC Imports”) on the interpretation of this paragraph. The Practice Notice sets forth CIPO’s interpretation of this decision.
In summary, the first step of the test is to determine if the trademark is a “geographical name”. The primary or predominant meaning of the trademark is relevant to that determination, and that determination applies to both the clearly descriptive and deceptively misdescriptive branches. In evaluating whether the trademark is a geographical name, the perspective of the ordinary consumer is only relevant when there is ambiguity as to whether the trademark is a geographical name[1]. One example provided in the MC Imports decision is the word “Sandwich”. “Sandwich” is the name of a number of towns in the United States and the United Kingdom, but it also refers to a food item. In such situation, the perspective of the ordinary Canadian consumer of the associated goods or services must be ascertained to determine if the primary or predominant meaning of the word is a geographical name. If the trademark is considered to be a geographical name and that the associated goods or services originate[2] from the location of that geographical name, the trademark will be considered to be clearly descriptive of the place of origin.
According to the Federal Court of Appeal in MC Imports, in assessing whether a geographic name is clearly descriptive of the place of origin, it is irrelevant as to whether the ordinary consumer has knowledge that the goods or services originate from the particular geographical location2. Thus, other than in making the determination as to whether the trademark is a geographical name, the perspective of the ordinary consumer is otherwise irrelevant to determining whether the trademark offends the clearly descriptive branch of paragraph 12(1)(b).
With respect to the deceptively misdescriptive branch of paragraph 12(1)(b), the Practice Notice indicates that a trademark is misdescriptive if the trademark is a geographical name and the associated goods or services do not originate from the location of the geographical name. A trademark is registrable even if it is merely misdescriptive of its associated goods or services. The registrability of a trademark is only prohibited if it is “deceptively” misdescriptive. In assessing whether a trademark is “deceptively” misdescriptive, the perspective of the ordinary consumer of the goods and services is relevant. The test is whether the ordinary consumer would be misled into the belief that the associated goods or services had their origin in the location of the geographic name in the trademark.
Since the publication of the Practice Notice, CIPO trademark examiners have been quite stringent in examining any application for a trademark containing a geographical name or indicator. In straightforward situations where the trademark is a word mark which is the name of a geographical location, it is expected that an examiner will object to the application on the basis of paragraph 12(1)(b) and thereby seek confirmation from the applicant as to the actual place of origin of the associated goods or services. However, it appears that the CIPO’s current practice is that examiners will raise a paragraph 12(1)(b) objection against an application even where the geographical name or indicator is an insignificant component of the trademark. One example of such is where the applied-for trademark is a design mark or a composite mark that consists of other distinctive design and/or word elements combined with a geographical name or indicator, such as the Canadian maple leaf.
The CIPO’s current practice in raising paragraph 12(1)(b) objections to applications where the geographical name or indicator is an insignificant component of the trademark is problematic. Most significantly, it is trite law that a trademark must be assessed as a whole. Arguably, a trademark cannot be taken as being clearly descriptive or deceptively misdescriptive of a geographical name or indicator if the trademark consists of other elements that dominate the depiction of the trademark, and the CIPO has accepted this in the context of examining composite trademarks for descriptiveness. Specifically, the CIPO’s practice notice entitled “Paragraph 12(1)(b): “Sounded” Test Applied to Composite Marks Which Include Words that Are the Dominant Feature of the Mark” makes clear that the CIPO takes the position that only one element in a trademark can be considered to be dominant. If the word element and the design element in a composite trademark are considered equally prominent, then neither the word element nor the design element can be the dominant feature of the trademark. In such situation, the trademark should be registrable since the trademark as a whole is not clearly descriptive.
While there is room for arguments to be made to rebut such an objection based on a very strict interpretation of geographic descriptiveness, this inevitably increases prosecution costs for applicants who are represented by trademark lawyers. Unrepresented applicants who do not have sufficient funds to consult trademark lawyers may lack sophistication to deal with such an issue, ultimately abandoning their application.
The CIPO’s application of the Practice Notice in assessing geographical names or indicators under paragraph 12(1)(b) creates a potentially insurmountable burden for interested applicants. If all arguments before the CIPO fail, interested applicants may have to rely on subsection 12(2)[3] or section 14[4] of the Trade-marks Act to overcome a paragraph 12(1)(b) objection in order to obtain registrations for geographical names or indicators as trademarks, although it is not necessarily easy to meet the burdens imposed by those sections.
Each trademark must be assessed individually to assess whether it is potentially unregistrable as clearly descriptive or deceptively misdescriptive of the place of origin of goods or services. It is advisable to first consult a trademark lawyer to assess your trademark and to discuss possible strategies for registering your mark.
[1] MC Imports, paras 57-64.
[2] According to the Trademarks Examination Manual, “goods or services may be found to originate from a geographic location if they are manufactured, produced, grown, assembled, designed, provided or sold there, or if the main component or ingredient is made in that geographic location.”
[3] An applicant can benefit from subsection 12(2) if it can show that the applied-for geographic name or indicator had been used in Canada as a trademark by the applicant or its predecessor in title so as to have become distinctive as of the date of filing an application for its registration.
[4] An applicant can benefit from section 14 if it or its predecessor in title has registered the geographic name or indicator as a trademark in or for its country of origin and can furnish evidence which shows that the trademark is not without distinctive character in Canada. However, note that pending applications which have not yet been advertised in the Trade-marks Journal will no longer have the benefit of relying on subsection 14 to overcome a paragraph 12(1)(b) objection when amendments to the Trade-marks Act come into force, which is expected sometime in late 2018 or early 2019.