Following on our previous post, the Trademarks Opposition Board (TMOB) published a practice notice on 20 January 2025 regarding its Registrar-initiated expungement proceeding pilot project.

To review, under this pilot project, the Registrar of Trademarks will proactively send notices under Section 45 of the Trademarks Act to initiate summary expungement proceedings against randomly selected trademark registrations. The owners of such trademark registrations will be required to submit evidence of use of the trademark in Canada in the three-year period immediately preceding the date of the notice, or demonstrate special circumstances excusing non-use.

The stated goals of the project are to promote efficient use of resources (by removing so-called “deadwood” from the Register of Trademarks), promote fair competition (by assisting businesses trying to create new brands by clearing trademarks that are registered but not in use), and maintain the integrity of the trademark system (by maintaining the accuracy of the Register of Trademarks).

The practice notice includes information on the selection of the registrations, the procedure for discontinuance of proceedings, and the procedure that will be followed through to decision. The practice notice also discusses topics including correspondence, evidence, written representations, extensions of time, decisions, and appeals.

In Matco Tools Corporation v. Canada (Attorney General), 2025 FC 118, the Federal Court set aside a decision by the Commissioner of Patents that refused to reinstate Matco’s Patent Application No. 3,086,194 (the “194 Application”). The 194 Application had been deemed abandoned due to a failure to pay maintenance fees.

The Canadian patent agent retained for the 194 Application received instructions solely from Matco’s U.S. counsel and had no direct contact with Matco. Matco’s U.S. counsel operated under explicit instructions “to take no further action in these matters with regard to payment of annuities and maintenance fees”. Matco used third-party service providers for managing payment of maintenance fees.

Prior to 2021, Matco retained Computer Packages Inc. (CPI) to manage maintenance fee payments. In June of 2021, Matco switched from CPI to Dennemeyer. An error occurred during the data migration from CPI to Dennemeyer regarding the 194 Application, resulting in the 194 Application not being properly imported into Dennemeyer’s systems. Matco did not notice the data migration error in Dennemeyer’s report on the data migration, and consequently, the maintenance fee for the 194 Application was not paid. The Canadian patent agent later sent a notice regarding non-payment of the maintenance fee to Matco’s U.S. counsel; however, the notice was not forwarded to Matco because of U.S. counsel’s instructions to take no action regarding maintenance fees.

Upon later learning of the deemed abandonment of the 194 Application, Matco requested reinstatement and said that the failure to pay the maintenance fee resulted from the unforeseen data migration error. The Commissioner refused reinstatement, finding that Matco failed to meet the required “due care” standard. In particular, the Commissioner found that the data migration error was not relevant to the due care analysis and that no satisfactory explanation has been provided as to why the notice regarding non-payment of the maintenance fee was not forwarded to Matco.

The Court took issue with the Commissioner’s due care analysis. The Court was of the view that the data migration error was the proximate cause of the events that led to the deemed abandonment of the 194 Application. As such, the Commissioner was required to examine whether due care was taken to avoid the proximate cause of the error. Furthermore, the Court agreed with Matco that the Commissioner was overly focused on U.S. counsel’s failure to forward the notice to Matco regarding non-payment of the maintenance fee, despite the fact that U.S. counsel was specifically instructed to take no action on maintenance fees.

As a result, the Court set aside the Commissioner’s decision and ordered a redetermination of the reinstatement request.

The full decision can be found here.

The Federal Court recently issued two decisions relating to the Patented Medicines (Notice of Compliance) Regulations, SOR/93-133: Bayer Inc. v. Amgen Canada Inc., 2025 FC 107 [Bayer] and Serono v. Canada (Health), 2024 FC 1848 [Serono].

Both decisions related to delays by the Minister of Health in listing drug patents on the Patent Register. Registration on the Patent Register grants broad rights to drug patentees to prevent competitors from entering the market, and those rights may be significantly broader than standard patent rights.

In both Bayer and Serono, the patentees submitted patent lists to the Minister of Health, who then reviewed the submitted lists for approximately a week before adding the drug patents to the Patent Register. During this brief delay, competitors had filed regulatory submissions for generic versions of the patented drugs.

Under the Patented Medicines (Notice of Compliance) Regulations, submissions for generic drugs are required to address drug patents that are listed on the Patent Register. Consequently, the submitted patents, which had not yet been added to the Patent Register at the time, did not affect the regulatory submissions for the generic drugs, as would have been the case if the submitted patents had been on the Patent Register.

In both Bayer and Serono, the Minister of Health decided that the relevant listing date for the patents was the date that the patents were added to the Patent Register (and not the date the patent lists were submitted). The Federal Court held that the Minister’s decisions were reasonable.

Drug patentees should be aware of the delay between submitting patent lists and having their patents listed on the Patent Register, and how this delay may affect their patent rights.

Under the Copyright Act, where someone wishes to make use of a copyrighted work but is not able to locate the copyright owner, they can apply to the Copyright Board for a license to use the work. The Copyright Board has the power to issue a non-exclusive license on terms and conditions that the Board may establish.

On 8 January 2025, the Copyright Board granted Free Agency Creative a license to use an undated and unattributed postcard titled View of Howe Sound and Squamish from Garibaldi Park. The license permits Free Agency Creative to reproduce the postcard at a community information center and at the community center’s website, as well as on a printed brochure.

The decision from the Copyright Board is a reminder of the importance of ensuring that appropriate licenses to use works are obtained, even if the owners of the works are not locatable.

A copy of the decision is available here.

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.