Category: Uncategorized

Tips For Startups: How To Make Sure Your IP Is Working For You

Posted on by Debbie Malek

Two things that startups never seem to have enough of are: time and money. It can be difficult to carve out enough of both to properly identify, manage, and protect your intellectual property (IP). Your IP, including your patents, industrial designs and trademarks, is at the center of your company’s value. As a result, protecting your IP is crucial and will give your company the boost it needs to succeed in a competitive marketplace. Knowing your IP is essential to identifying your competitive advantage, focusing your R&D efforts, and creating an innovative company culture. IP should be the main component of your business plan and your pitch to customers and investors as it is normally your main selling point.

As a startup, you already have passion for your business, and you are convinced that you will be successful. Now, in order to apply your passion to the right strategy, you should ask yourself a series of questions to help pinpoint and identify what IP you currently possess and if it is valuable:

  • What you are doing that is new? What new features have you added, or improvements have you made lately?
  • What makes your product better, or faster, or more accurate, or more efficient than your competitor’s products?
  • What features of your product do customers value the most when making purchasing decisions?
  • Is your company name or logo unique in your industry? Did you check to make sure no one else has it registered as a trademark?
  • Have you designed a new product with a distinctive name, product shape, physical design or packaging?
  • Once you choose your name and logo, have you been consistently using it on your products, packaging, marketing materials, your website and your social media? Document the date you first used it!

One way to answer these questions is to formally evaluate your IP, you could use an IP law firm to do it, which is always recommended but you could also try to figure it out yourself by doing some market and competitor research.

Ideas born from your IP evaluation can form the basis for the future direction of your R&D, which will eventually turn into more patents, industrial designs, and trademarks that you will want to protect and leverage going forward.

Now that you have defined your “secret sauce” you can use it in several ways:

  • File a patent to demonstrate that you have a technological advantage important enough that you are willing to invest in a patent to protect it.
  • Gain credibility with financial investors and VCs. Include it in your pitch and highlight it in your business plan.
  • Get your sales and marketing people to highlight the IP incorporated into your products when interacting with customers.
  • Use your IP to develop and foster a culture of innovation in your company. Celebrate inventors to encourage the generation of new ideas.
  • Leverage your IP to form strategic partnerships and alliances to scale up your business or license out your IP for royalty revenue.
  • Build and protect your brand by consistently monitoring your trademarks to make sure no competitors are using them, and cause customers to mistake a competitor’s product for yours.

Your IP is already there. However, you need to take the time to identify it, protect it, then learn how to artfully articulate it to investors and customers to get the most out of it.

For more information, please contact:

T: 613-567-0762
E: general@mbm.com

Author: David Fraser, Patent Agent

 

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

Don’t Let Your Trademark Go Up In Smoke: “smoking is cool” Branding Is Prohibited Under Canada’s Cannabis Act

Posted on by Debbie Malek

In Canada, trademark registration is an important form of intellectual property protection for brand-owners as it confers the right to exclude others from using confusingly similar trademarks across Canada. Having said that, brand-owners in the cannabis space looking to register their name or logo as a trademark face a unique challenge; a trademark registration does not mean the trademark itself can be lawfully used in association with cannabis products, accessories, or services in Canada under the Canadian Cannabis Act, SC 2018, c 16 (“Cannabis Act”).

BRANDING RESTRICTIONS UNDER THE CANNABIS ACT

The Cannabis Act has placed strict regulations surrounding the sale and promotion of cannabis products, accessories, and services for the purposes of protecting Canadians, in particular young persons. Since the legalization of cannabis, many Canadians have become familiar with strict packaging restrictions, similar to those required in the sale of tobacco products. What may be less known is that the Cannabis Act imposes rigorous branding and promotional restrictions which go beyond the actual packaging.

Of particular concern with respect to the selection and use of a trademark, cannabis products or any related service cannot be promoted:

  • in a manner that could reasonably be believed to be appealing to young persons;
  • by means of the depiction of a person, character or animal, whether real or fictional; or
  • by presenting it or any of its brand elements in a manner that associates it or the brand element with, or evokes a positive or negative emotion about or image of, a way of life such as one that includes glamour, recreation, excitement, vitality, risk or daring.

(see section 17 of Canada’s Cannabis Act).

Similarly, each province may also have additional restrictions related to cannabis branding. Quebec, for example, a particularly strict province with respect to cannabis branding, is governed under a similar provision which restricts promotion of cannabis in such a way that associates the use of cannabis with a particular lifestyle (see section 53(3) of Quebec’s Cannabis Regulation Act.)

CANNABIS TRADEMARKS SHOULD BE CHOSEN CAREFULLY

In light of the above, careful consideration must be taken when selecting the name and/or logo to be used as a trademark in association with cannabis-related products and services in Canada, as non-compliance can result in a fine as high as $5 million or up to 3 years imprisonment. Therefore, savvy cannabis businesses should recognize these limitations and work within these restrictions when developing a commercial strategy in order to distinguish their brand.

Budding cannabis entrepreneurs should also keep in mind that in addition to the Cannabis Act, trademark applications for registration must be in compliance with the regulations imposed by Trademarks Act and Trademarks Regulations. For instance, it remains to be seen whether a cannabis trademark can be restricted under section 9(1)(j) of the Trademarks Act for being scandalous, obscene or immoral in such a way that would offend a significant segment of the Canadian public. Ideally, it is recommended that cannabis brand-owners seek legal counsel before using or applying to register a trademark to ensure that they are set up for commercial success with a brand strategy that falls within the purview of lawful promotion and branding of cannabis.

 

For more information please contact:

Deborah Meltzer, Trademark Agent & Associate Lawyer
T: 613-801-1077
E: dmeltzer@mbm.com

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

Unauthorized Photographs: The Rights Of The People We Capture

Posted on by Debbie Malek

We live in the digital age of smartphones and social media, where the large scale capturing and sharing of photographs has become a global run-of-the-mill form of communication and expression. The rights in these photographs are typically subject to the licensing schemes of the various social media platforms to which they are posted. This is because the authors of these works, the photographers, own copyright in the images they create. However, on the other side of the lens, what frequently gets overlooked are the rights of the people in the photographs as opposed to the ones taking it. This is not an unfamiliar concept. For instance, the Duke and Duchess of Sussex have recently made headlines regarding the unauthorized use of their image by various media outlets.

When it comes to celebrities and other public figures, the laws across Canada have established various personality rights to protect these individuals from the exploitation of their image or likeness. That said, the law is less clear as to the particular rights of private citizens who are the subject of an image to which they did not consent. In Canada, the use of an individual’s image can be unlawful where:

(a) an individual’s name, reputation, or likeness is commercially exploited; or

(b) an individual’s right to privacy has been violated

These wrongs are actionable under the tort of appropriation of personality and provincial privacy torts.

COMMERCIAL EXPLOITATION OF AN IMAGE OR LIKENESS

The tort of appropriation of personality most commonly protects the right of a celebrity or other public figure against the use of their image or likeness for a commercial purpose without their consent. This stems from the idea that a person should have the exclusive right to market and/or capitalize on their personality and image. This is of course subject to certain exceptions (e.g., biographies, plays, books, etc.) where the purpose is to provide insight into that individual (see for example Gould Estate v Stoddard Publishing, [1998] O.J. No. 1894 (ONCA)).

The case law has established that to succeed in the tort of appropriation of personality, the following criteria must be met:

1. The use of the image or likeness must be for a commercial purpose (see Athans v Canadian Adventure Camps Ltd. [1977] O.J. No. 2417 (Ontario Supreme Court); and

2. The individual (plaintiff) must be clearly and primarily captured in the image (see Krouse v Chrysler Canada Ltd. et al., 13 C.P.R. (2d) 28 (1973 ONCA))

While this tort is technically available to non-famous people, it is obviously less likely that an image of a person without notoriety would be commercially exploited. That said, with respect to individuals with professional designations, their professional reputation is protected under the right of personality. For instance, in Hay v Platinum Equities Inc. 2012 ABQB 204, an accountant’s signature was unlawfully used to secure financing for a loan and the Court held that professional reputation for commercial exploitation is akin to celebrity name and likeness.

PRIVACY RIGHTS

In Canada, individuals have the right to a reasonable expectation of privacy. There is a distinction between “personality” – the exclusive right to use your likeness for commercial gain, and “privacy” – the rights of seclusion and the protection of personal information. These concepts, although often intertwined, are legally distinct; a breach of privacy causes personal harm while an appropriation of personality causes commercial harm.

With respect to privacy rights, in Jones v Tsige, 2012 ONCA 32 (“Tsige”), the Ontario Court of Appeal recognized that the tort of “intrusion upon seclusion” exists in Ontario. In that case, the defendant had used her access as a bank employee to view the plaintiff’s banking information over 150 times over a 4-year period. The required elements to satisfy the tort were defined as follows:

1. The defendant’s conduct must have been intentional (this includes recklessness);

2. There must be an “intrusion” – the defendant must have invaded, without lawful justification, the plaintiff’s private affairs or concerns; and

3. The invasion must be highly offensive to a reasonable person (i.e., causing distress, humiliation, or anguish).

Additionally, the Court stressed that proof of harm to a recognized economic interest is not an element of the cause of action. This means that no actual damage or commercial exploitation is required in establishing intrusion upon seclusion. It is sufficient that the privacy of the plaintiff was egregiously violated.

In relation to control over a person’s image, over 20 years ago in Aubry c. Vice Versa Publishing Inc. [1998] 1 SCR 591 (“Aubry”), the Supreme Court of Canada recognized that the right to one’s own image falls within the right to privacy under section 5 of the Quebec Charter of Human Rights and Freedoms. In this case, the defendant published a picture in a magazine of a woman in a public space, with no defamatory implications in the context of the image or magazine content. However, since the individual was clearly identifiable and her permission was not sought prior to publication, a majority on the Court concluded that the freedom of artistic expression did not justify the infringement of the right to privacy.

Although the civil remedy in Aubry is particular to Quebec in light of the broad scope of the Quebec Charter, the Supreme Court’s determination is nevertheless important because it exemplified that the protection of a person’s image forms part of their personal privacy interest.

In Ontario, in Jane Doe 72511 v Morgan, 2018 ONSC 6607, relying on the reasoning in Tsige, the Ontario Superior Court of Justice adopted the tort of public disclosure of private facts. In that case, the defendant was the ex-boyfriend of the plaintiff, who posted unauthorized intimate/nude photos and videos of the plaintiff on a public website that was viewed over 60,000 times. Paramount to this finding was that the act of publication was highly offensive and not of legitimate concern to the public.

CONCLUSION

As referenced in Tsige, legal scholars have written of “the pressing need to preserve ‘privacy’ which is being threatened by science and technology to the point of surrender”. The exponential growth of social media platforms and smartphone usage is generating unprecedented privacy concerns which are outpacing current statutory and common law privacy rights. Until Canadian and provincial laws catch-up, photographers and social media users should understand that what they capture, more importantly who they capture, may, one way or another, intrude on someone’s rights. Regardless, when snapping a photo, photographers should exercise best practice and ask for consent of the people they capture.

 

For more information please contact:

Deborah Meltzer, Trademark Agent & Associate Lawyer
T: 613-801-1077
E: dmeltzer@mbm.com

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

Importance of Determining Inventorship Prior to Patent Issuance

Posted on by Debbie Malek

Determining inventorship, prior to patent issuance, can save an applicant the costly procedural and evidentiary burden required for correcting the named inventors post patent issuance. Since Canadian patent law requires that each patent application list the sole inventor(s) of the claimed invention, divisional applications derived from an application having two or more inventors must list only the inventors that contributed to the claimed invention.

Although a patent may still be issued for an application not listing the sole inventor(s) of the claimed invention, the patentee may be required to correct the records of the Patent Office to reflect the sole inventor(s). However, post patent issuance, to correct the records of the Patent Office, the patentee must bring an application to the Federal Court (“Court”). In doing so, the patentee must follow the evidentiary and procedural requirements for removing a named inventor and/or adding an inventor to the named inventors of the issued patent. This was the case in Inguran LLC dba STgenetics v Commissioner of Patents, 2020 FC 338, for which the patentee, STgenetics, brought an application to the Court for an order to remove six of the twelve named inventors from the records of the Patent Office relating to four issued patents.

To obtain the order for removing named inventors, STgenetics had to meet the test outlined in Imperial Oil Resources Ltd v Canada (Attorney General), 2015 FC 1218. The test asks two questions:

 1. Does it appear that one or more of the named inventors have no part in the invention? and

2. Has an affidavit been provided to satisfy the Court that the remaining inventors are the sole inventors?

In order to meet the test, STgenetics provided affidavits from both inventors determined to have contributed to the issued patents and from non-inventors incorrectly named as inventors. The determined inventors deposed that they contributed to the issued patents, and the non-inventors deposed that they did not contribute to the issued patents.

Based on STgenetics’ evidence, the Court determined that STgenetics met the procedural and evidentiary burden required for removing the names of the non-inventors. Accordingly, the Court ordered the Commissioner of Patents (“Commissioner”) to vary the records of the Patent Office with respect to the inventorship of the issued patents.

Although STgenetics’ application to the Court was successful, the application and the evidentiary burden to satisfy the Court of the relevant jurisprudential tests and procedural requirements could have been avoided had the inventorship been determined prior to the issuance of the patents. STgenetics, could have simply, prior to receiving the notice of allowance, requested the Commissioner to remove the names of the non-inventors and submitting the affidavits. Had STgenetics done so, it could have saved the time and money spent in pursuing the Court application.

 

For more information please contact:

Jamal Hakimi, Patent Lawyer
T: 613-801-0509
E: jhakimi@mbm.com

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

Digital books and ownership rights in the information age

Posted on by Debbie Malek

It is interesting how digital books compare to physical books in this electronic age. The rights users have over physical books have often been likened to the rights we may have over currency. For example, just like we can’t make copies of currency, we can’t make copies of a book protected by copyright – but we can trade a book for something else, loan it to someone, give it away as a gift, or resell it. We can own the physical copy of the book itself, even if we don’t own the right to copy it.

Digital books (aka eBooks) on the other hand seem to present a far more complex set of ownership rights. Not only is it the case that users do not have the ability to do many of the above things with digital content, it may actually be the case that they do not “own” the actual digital book either.

In mid-2019, Microsoft announced that it would cease to provide digital books on the Microsoft Store. In accordance with this move, it also said that it would be deleting user’s existing digital book libraries. While users would be refunded for the purchases they had made, one can’t help but imagine that users would still feel a bit frustrated with this forced sort of refund.

And as history repeats itself, this scenario is no stranger to the law. In 2009 (indeed, a whole decade before the Microsoft matter), Amazon had run into some legal troubles for similarly deleting copies of works by George Orwell from customers’ Kindles. After a teenager sued the company (possibly for having been unable to complete his homework), Amazon settled and promised that it wouldn’t delete content from U.S. users’ devices without their permission.

This blurring of the rights associated with digital content has recently gained even more attention with Macmillan Publishers’ stance on libraries and eBooks. As one of the world’s largest publishing companies, it’s interesting to see Macmillan restricting sales of eBooks libraries in order to prevent them from loaning more than a single copy of a digital book to a single reader at one time. This has resulted in lengthy waiting lists for eBooks at many libraries, something some have called a means to restrict certain classes from obtaining new literature.

The reason Macmillan Publishers is likely able to do this is because digital copies of books actually remain under the ownership of the publishing companies, and are usually only licensed to users, libraries or whoever else. Thus, if a publisher, or even a distributor like Microsoft or Amazon, decides to end the licensing agreement, they can.

As one possible way to circumvent this system, many authors are now choosing to bypass publishing houses altogether, and create exclusively digital content for companies like Amazon directly. This however means that certain works will only be available digitally through certain companies. This may result in people having to obtain a plurality of subscriptions, and has been analogized to requiring subscriptions to Netflix, Hulu, Amazon Prime in order to watch all the shows you love. Perhaps readers will not though, as long as they can still snuggle up at the end of the day to read their favourite works.

If you are wrestling with a digital ownership issue and would like some assistance, please reach out to MBM today and one of our professionals would be happy to assist you.

T: 613-567-0762
E: general@mbm.com

Authors: Osman Ismaili, Patent Associate

 

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

Common Patent Misconceptions – Myth #2

Posted on by Debbie Malek

This article is part of a series on commonly held misconceptions about patents. Many prospective patentees often have unfounded reservations about patenting their inventions. The aim of this series of short articles is to debunk these common myths around patent protection.

Patent Myth #2: I don’t need a patent because I’m the only one with this technology, no one else will be able to enter the market.

This surprisingly common belief is in some ways related to Patent Myth #1. Having a quick read of that article may help with understanding the connection to this piece.

Many startups and even some SMEs often hold the view that because they were the first to come up with a particular technology that fact will somehow serve as a natural barrier to entry for others. While this may be true in some rare cases, these companies often fail to realize that other, often larger entities have well-established R&D departments that, among other reasons, are there to understand competing technologies and, in some cases, learn to reverse engineer them.

In Patent Myth #1, we touched on the case of Microsoft Corp. v. i4i Ltd. Partnership, 564 U.S. 91 (2011), where the Supreme Court of the United States (“SCOTUS”) found Microsoft to have infringed the patent of a much smaller Toronto-based company. In that case, the Canadian company, i4i was successful first and foremost because it had a patent for its document editing invention. If i4i had instead chosen not to file a patent, there would have been no infringement even if Microsoft used or copied their technology. At the very least i4i would have been gambling with the time and money they invested in developing their software.

This discussion also ties into the law of trade secrets in that a company certainly could choose to maintain its invention as a trade secret, but it may not always be appropriate. The Canadian Intellectual Property Office (“CIPO”) website states: “Trade secrets can be very valuable when you have developed new technology, designed original products, created the perfect recipe, or have a gold mine of customer data. However, it may not be the best choice of intellectual property (IP) protection if your competitors can easily reconstruct your creation.” The last sentence is precisely what companies should be thinking about when considering a patent. Even if you are the first to bring something to market, it is important to keep in mind that someone might still be able to dissect and understand it.

Never forget that maintaining a trade secret as a secret has its own challenges, and even something like a disgruntled former employee can put a trade secret into a risk of being publicized. As CIPO states, “Once a trade secret is made public, it loses its business value and legal remedies are complex.” Even if someone breaches an agreement and has to ultimately pay damages, that trade secret can still never go back to being a secret, so its value is irretrievably lost.

One final note relates to the “on sale bar” in the United States. In January 2019, SCOTUS decided in a landmark decision, Helsinn Healthcare v. Teva Pharma USA, 586 U. S. ____ (2019), that “an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential can qualify as prior art under §102(a).” This means that even if an invention is sold as a trade secret, it could prevent the inventor from later obtaining a patent for it. Many inventors believe they’ll be able to profit from their invention as a trade secret for some years before they file for patent protection, but this approach may be risky, if not dangerous.

Could someone reverse engineer and/or copy your invention? If you think the answer is yes, then it’s likely you should look into obtaining patent protection. Please feel free to reach out to MBM for a free consultation.

T: 613-567-0762
E: patents@mbm.com

Author: Osman Ismaili, Patent Associate

 

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

The aftermath of the new Canadian Trademark Legislation

Posted on by Debbie Malek

On June 17, 2019, Canada’s new Trademarks Act and Trademarks Regulations came into force. The new Act and Regulations introduced significant changes to Canada’s trademark practice. The implementation of the new Act and Regulations has been challenging and a learning experience for everyone, including trademark owners, practitioners and Canadian Examiners.

We dug deeper into some of the more notable changes to give you a little extra insight:

INCREASED FILING FEES & NICE CLASSIFICATION:

As Canada acceded to the Nice Agreement, Applicants are now required to classify their goods and services according to the Nice Classification system.

The Nice Classification system is an international system, administered by the World Intellectual Property Office (WIPO), for classifying goods and services and is comprised of 45 different classes.

Under Canada’s new trademark regime, trademark filing fees are dependent on the number of classes of goods and services contained in the application.

Applicants must be aware that, unlike in other jurisdictions, a trademark application cannot be filed in multiple classes of goods and services with the intention to re-assess the Nice Classes and associated fees later. The filing fees are based on the number of classes of goods and/or services contained in the application at the time of filing, regardless of whether some of those goods or services are deleted at a later date. For this reason, it is important to carefully assess the goods and services and the Nice classes prior to filing the application to ensure all appropriate fees are paid.

Canada’s new government filing fees are:

  • $330 for the first class of goods and/or services; and
  • $100 for each additional class of goods and/or services

NO “USE” REQUIREMENT:

Under the new Act, trademark owners are no longer required to use their trademarks in Canada in order to obtain a registration. In this regard, a “date of first use” is no longer required in an application and applicants do not have to file a Declaration of Use attesting to the fact that use of the trademark has occurred in Canada.

Trademark owners should still be aware that use of a trademark will be an important factor in maintaining protection of the trademark in Canada. If a trademark is not being used in Canada by the third anniversary of the registration date, it can be vulnerable to “non-use cancellation” proceedings.

While the removal of the “use” requirement has simplified the application process, MBM recommends filing for and using your trademark as soon as possible to protect your business and your brand! Trademark owners should also closely monitor the marketplace for any third-party use to proactively safeguard against trademark trolls seeking to register brands that do not belong to them.

REGISTRATION FEES:

Under the new Act, trademark owners are no longer required to pay a government registration fee to obtain registration of the trademark. However, trademark owners should be aware that registration fees must still be paid on applications that were filed prior to June 17, 2019.

RENEWALS:

Under the new Act, a trademark will be valid for a period of 10 years (previously 15 years). Similar to filing fees, the Trademarks Office is now charging renewal fees on a per class basis.

Canada’s new renewal fees are:

  • $400 for the first class of goods and/or services; and
  • $125 for each additional class of goods and/or services.

In addition to increased renewal fees, there is also now a strict renewal window wherein owners can renew their trademarks. The new renewal window is six-months prior to and six-months after the renewal deadline.

Additionally, trademark owners should be aware that any trademarks registered prior to the coming into force of the new Act will require that the goods and services be classified according to the Nice Classification system.

For any registrations that do not have the goods and services classified according to the Nice Classification system, MBM recommends filing a request to classify the goods and/or services as soon as possible to facilitate the renewal payment process.

If goods and services are not classified prior to paying the renewal fee, the Trademarks Office will issue a notice pursuant to Subsection 44.1(1) of the Act, setting out the requirement to group and class the goods and services and if the request is not filed, the Trademarks Office will issue a second notice stating that the registration may be expunged if the goods and services are not furnished within the set timeframe.

NON-TRADITIONAL TRADEMARKS:

Under the new Act, trademark owners can file “non-traditional” trademarks. “Non-traditional” trademarks include: sounds, moving images, holograms, scents, tastes, colour, three-dimensional shapes, textures, modes of packaging goods and positioning of a sign.

Upon a review of the Canadian Trademarks online database, it appears that many brand owners are taking advantage of the ability to file “non-traditional” trademarks, with over 300 “non-traditional” trademarks filed between June 17, 2019 and March 24, 2020.

DIVIDING AND MERGING TRADEMARK APPLICATIONS:

Canada’s new Act allows trademark owners to divide their trademark applications. A divisional application can be filed in order to expedite the registration of the trademark for any goods and services that have not received any objections.

Additionally, owners also now have the ability to merge their trademarks. The new Act states that if a trademark that was previously divided proceeds to registration, this trademark may be merged with the other registration(s) that originated from the initial application.

INHERENT DISTINCTIVENESS:

Under the new Act, one of the most significant changes to the examination of trademarks is that the Registrar now has the ability to refuse a trademark on the ground that it is not inherently distinctive.

While Section 2 of the Act defines “distinctiveness” in relation to a trademark, there is no statutory definition for “not inherently distinctive”. However, the Canadian Trademarks Examination Manual (TEM) has some guidelines with respect to inherent distinctiveness and when a trademark can be refused because it is not inherently distinctive. Some examples of trademarks listed in the TEM that are considered to be not inherently distinctive include:

  • Trademarks which are primarily geographic locations, names, or surnames;
  • Trademarks that consist of one- or two-letters or numbers;
  • Trademarks that consist of a design common to the trade, unless it is depicted in a special or fanciful manner (i.e. a design of grapes on a vine would not be registrable for use in association with wine);
  • Trademarks that are the names of colours in relation to goods that would typically be that colour (i.e. WHITE would not be registrable for use in association with toothpaste);
  • Trademarks that are clearly descriptive in English or French (i.e. FURNITURE STORE/MAGASIN DE MEUBLES would not be registrable in association with the retail sale of furniture);
  • Trademarks that consist of laudatory words and phrases (i.e. WONDERFUL, WORLD’S BEST, ULTIMATE); and
  • Trademarks that serve only to provide general information about the goods or services (i.e. FRAGILE would not be registrable for use in association with labels to be affixed to packages).

Since the new Act came into force, many Examiners are raising objections that, in their preliminary view, trademarks are not inherently distinctive.  The majority of these objections are generally being raised on the basis that the trademark consists of ordinary or generic words and other traders should be able to use these words in the ordinary course of their business.

When issuing a not inherently distinctive objection, Examiners are required to provide evidence to support their objection that the trademark is not inherently distinctive. The evidence provided by the Examiner must be in relation to the goods and services and must be within Canada. In this regard, some issues that are being brought up between practitioners and Examiners is that the trademarks are not always being taken into consideration with the associated goods and services and the Examiner’s evidence is not always within Canada.

Further, while several Examiners are raising objections that trademarks are not inherently distinctive, it may be possible to overcome the objection by either: (1) arguing that the trademark is inherently distinctive (or at least has some degree of inherent distinctiveness); or (2) filing affidavit evidence that the trademark had acquired distinctiveness at the time of filing the application in Canada.

Trademarks can acquire distinctiveness through significant use of the trademark in Canada. When a trademark is said to have acquired distinctiveness it is said to have acquired a secondary meaning and leaves a distinctive impression in the minds of consumers, when considered in association with the goods and/or services. In other words, to establish that the trademark has acquired distinctiveness, the evidence must show that the Canadian public would strongly associate the trademark with the particular goods and services and not any other possible meaning of the word.

At this time, it is difficult to predict when or if an objection that the trademark is not inherently distinctive will be raised, as it appears that this ground of refusal is being interpreted differently. We do note that the Canadian Intellectual Property Office (CIPO) has been in open discussions with trademark practitioners and the Intellectual Property Institute of Canada (IPIC) regarding the frustration and challenges surrounding these objections. Based on the discussions between CIPO, IPIC and trademark practitioners, we anticipate that within the next 1-2 years, there will be some case law, clarification and fine-tuning of the guidelines with respect to these not inherently distinctive objections.

BACKLOG AT CANADIAN TRADEMARKS OFFICE:

Due to the changes in the Act and many systems at the Canadian Trademarks Office, there is a longer than usual delay in the examination of trademark applications. Currently, it is taking between 17 and 22 months to receive a first action from the Trademarks Office. We understand from the Trademarks Office that they are in the process of hiring several new Examiners and within the next 2-3 years, examination of a trademark application should be more in line with the United States Patent & Trademark Office, approximately 7-10 months to receive a first action.

 

For more information, please contact:

T: 613-567-0762
E: trademarks@mbm.com

Author: Kimberly Dunn, Trademark Agent

 

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

No success for Questor in its quest for an injunction

Posted on by Debbie Malek

QUESTOR TECHNOLOGY INC V STAGG, 2020 ABQB 3

Despite whatever the clauses in employment agreements may read, an injunction will likely not be granted if it does not seem fair and equitable to do so.

In this decision, while the Court of Queen’s Bench of Alberta (the “ABQB”) declined to issue an injunction in favour of Questor Technology Inc (“Questor”), it did order former employees of Questor (the “Defendants”) to return to Questor any and all confidential information they had taken from Questor in breach of their employment contracts.

BACKGROUND

Questor, an environmental technology company, is in the business of selling custom incinerators, used primarily in the oil and gas industry for burning waste gasses like methane. The Defendants had designed a low-pressure waste gas combustion solution for Questor, while employed by Questor. However, after departing from Questor, the Defendants launched a company of their own, offering a competing low-pressure waste gas incinerator (the “Competing Technology”).

Questor asserts it is the owner of the Competing Technology by way of either: (i) terms of the employment contracts signed by the Defendants, or (ii) application of the common law. As such, Questor sought an injunction against the Defendants from aspects such as competing in the market against Questor, or infringing Questor’s intellectual property (“IP”) – Questor claimed it owned the IP relating to the Competing Technology.

The sole issue in this decision was determining whether an interim injunction ought to be granted in favour of Questor against the Defendants.

ANALYSIS

The ABQB ran through the test in RJR-MacDonald Inc v Canada (AG), [1994] 1 SCR 311 to determine whether an injunction ought to be granted. The test would require Questor to demonstrate: (a) that there is a serious issue to be tried; (b) that Questor will suffer irreparable harm if the application is refused; and (c) that the balance of convenience weighs in favour of granting the injunction. However, the ABQB found that this case was an exception, where a higher standard would apply for the first element of the test, namely that Questor would need to establish a strong prima facie case.

A detailed analysis of the Defendants actions led the ABQB to determine that Questor had not established a strong prima facie case for the injunction. Similarly, the ABQB was unconvinced that Questor had clearly proven that it would suffer irreparable harm if the injunction were not granted. Finally, the balance of convenience seemed to favour the Defendants, as an injunction would shut down everything they had built, while Questor, a larger, publicly-traded company, would likely be unaffected if the injunction was denied.

The ABQB remarked that as injunctions are an equitable remedy, it would not be fair and just to issue one in those circumstances.

COMMENTARY

Different areas of the law are often much more interconnected than people may believe. Obligations to confidential information, employment agreements and assignments of inventions all affect IP rights. While the ABQB did not answer questions like whether Questor was the rightful owner of the Competing Technology, the questions themselves still played a key role in determining the outcome of the case. Even if relevant IP questions had been answered, it would still likely have been unjust to grant an injunction in this case.

If you are dealing with a legal issue where IP may be involved, please feel free to reach out to MBM for a free consultation.

T: 613-567-0762
E: general@mbm.com

Authors: Osman Ismaili, Patent Associate

 

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

Absence of a Canadian patent leaves the PMPRB powerless to control the price of Cystadrops

Posted on by Debbie Malek

While the Patented Medicines Prices Review Board (“the PMPRB”) polices the prices of patented medicines in Canada, a recent article in The Globe and Mail suggested that a loophole may exist for drug manufacturers that have chosen not to acquire Canadian patent protection.

Cystadrops, a cysteamine hydrochloride-based eye drops formulation is produced by Recordati Rare Diseases Inc. (“Recordati”), and is used to treat a rare disease known as cystinosis. Cystinosis is characterized by the abnormal accumulation of the amino acid cystine in various organs of the body, including crystal build up in the eyes. While about one hundred Canadians suffer from cystinosis, the cost for a year’s supply of Cystadrops is approximately $111,000 per individual.

This price is largely due to the fact that Cystadrops does not fall within the jurisdiction of the Canadian federal regulatory body for medicines pricing. As Recordati chose not to obtain a Canadian patent for its formulation, any price regulation for Cystadrops by the PMPRB would be ultra vires. Compounding pharmacies in Canada largely stopped making cheaper versions of the drug when Recordati’s version was given the green light by Health Canada.

Another interesting aspect to note is that typically data privacy regimes provide innovative drugs with a data protection period of eight or eight and a half years, during the first 6 of which a (typically generic) manufacturer seeking a Notice of Compliance (“NOC”) will be prevented from filing its drug submission.

A search of the Register of Innovative Drugs has revealed that while there is no active data protection over Cystadrops, a related formulation of cysteamine bitartrate is protected and is associated with another company. Whether any patent or NOC links exist between the two formulations, or another third party for that matter, remains unclear. Furthermore, perhaps the very small market of just one hundred people acts a natural barrier to entry for generics or compounding pharmacies to invest in preparing the formulation.

With drug pricing regulations already being a contentious issue in Canada, it will certainly be of interest to see how this particular situation will develop, or if more information will be brought to light. In any case, as a result of the price of Cystadrops, Ontario became the first province to fund the drug, with other provinces expected to follow suit.

T: 613-567-0762
E: patents@mbm.com

Authors: Osman Ismaili, Patent Associate

 

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

Update to Trademark Practice in Canada

Posted on by Debbie Malek

On January 17, 2020, the Canadian Trademarks Office issued amendments to several Trademark practices. The amendments affect the following:

  • Extensions of time in Examination: The Trademarks Office will no longer grant extensions of time unless the Applicant demonstrates exceptional circumstances that would justify the extension.
  • Divisional Applications: The Trademarks Office has not yet set up a dedicated e-service for filing divisional applications. As such, the Office has clarified that to file a divisional, an Applicant may either: (1) file an amended application outlining the goods/services to be included in the divisional application; or (2) file the divisional by way of a paper request.
  • Transitional Provisions regarding Nice Classification: The Guide to Transitional Provisions has been amended to reflect that notices under44.1(1) of the Trademarks Act will generally only be sent after the renewal of a registration for which the goods/services have not been properly grouped according to the classes of the Nice Classification system.
  • Renewals: The Trademarks Office has provided clarification on the procedure for classifying the goods or services according to the classes of the Nice Classification system when renewing a trademark registration.
  • Temporary Appointment of Trademark Agent or Associate Trademark Agent: Trademark owners will now have the ability to appoint a temporary Canadian Trademark Agent for the purposes of grouping the goods or services according to the Nice Classification system.

 

For more information, please contact:

T: 613-567-0762
E: trademarks@mbm.com

Author: Kimberly Dunn, Trademark Agent

 

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.
Top Top