Category: Uncategorized

The Impact of Changes to Canada’s Trademarks Act on the Pharmaceutical Industry

Posted on by Debbie Malek

The Canadian trademark regime is set to experience a significant overhaul once major amendments to the Trademarks Act take effect. The amendments are expected to come into force in 2019 and are designed to allow Canada to implement the Nice Agreement, the Singapore Treaty and the Madrid Protocol. While the amendments will have an impact on all Canadian trademark owners and any business seeking trademark protection, they will present unique challenges to the pharmaceutical industry specifically.

Registration Regardless of Use

One of the most significant changes to the Trademarks Act involves removing the requirement that a trademark must be used prior to registration. Under the new practice, a trademark application will automatically proceed to registration upon expiration of the opposition period. Currently, it is possible to file a trademark application on the basis of “proposed use” or “intent to use”. However, an application based on proposed use cannot proceed to registration until the applicant files a declaration attesting to use of the mark in Canada.

Companies seeking to protect a proposed drug name not only have to comply with the trademark registration process, but also have to seek the approval of any proposed drug name from Health Canada as part of drug approval process, in accordance with the Food and Drug Regulations. Health Canada’s assessment of a drug name is performed from a health and safety perspective. Factors considered by Health Canada include the similarity of existing and discontinued drug names and the potential to mistake one drug name for another, resulting in medication errors. There is no guarantee that a drug name used and allowed internationally will be approved for use in Canada.

The Health Canada approval process can be lengthy and there can be no sale of the product – and consequently no use of the drug name – while approval is pending. This means that pharmaceutical applicants are often forced to request multiple extensions of time to file declarations attesting to use of a mark, and may even lose their applications if there is no use of a mark prior to the final deadline to file the declaration.

The new trademark laws will allow owners of pharmaceutical trademarks to obtain registered trademark protection prior to the completion of the drug approval process, thereby eliminating the need to file (or request extensions of time to file) declarations attesting to use. The result is a more rapid and streamlined trademark registration process.

That said, use will remain an important consideration for trademark owners since a registration will be susceptible to a non-use cancellation proceeding beginning three years after the date of registration. If there is no use, and an owner cannot establish “special circumstances” justifying the lack of use, the registration will be cancelled. However, it is possible that non-use due to pending Health Canada approval may be considered a “special circumstance” sufficient to justify maintaining the registration despite no use of the mark in Canada.

Non-Traditional Trademarks

Current Canadian trademark law permits registration of a limited number of non-traditional trademarks such as colour, shape and sound. The amendments to the Trademarks Act will allow applicants to seek trademark protection for a wider variety of non-traditional trademarks including holograms, scents, tastes and textures. However, with the changes will come an additional level of scrutiny as it will be necessary to show distinctiveness of a trademark at the date of filing if the Canadian Trademarks Office does not consider the mark to be inherently distinctive. At present, there is no requirement to prove distinctiveness of marks consisting of colour, shape or sound.

To prove distinctiveness of a mark, an applicant will have to file affidavit evidence and/or survey evidence establishing the reputation and distinctiveness of its trademark across Canada. If proof of distinctiveness is only demonstrated in parts of Canada, the resulting registration will be restricted to those provinces and/or territories in which distinctiveness has been established.

Pharmaceutical companies have historically faced unique challenges when seeking registered trademark protection of colour, shape and sound marks. The recent case Canadian Generic Pharmaceutical Association v Boehringer Ingelheim Pharma Gmbh & Co. KG (2017 TMOB 47) confirms the additional hurdles faced by the pharmaceutical industry in proving distinctiveness of a product having a particular shape and colour. Not only must it be shown that an ordinary consumer associates the trademark (without markings) with a single source of manufacture to a significant degree, but that association must be established for a substantial body of consumers which, for pharmaceutical products, consists of physicians, pharmacists and patients.

Given that there is presently no requirement for proving distinctiveness of colour, shape and sound marks, it is advisable for trademark owners to consider seeking protection now, while the more lenient trademark regime remains in effect.

International Registration of Trademarks

Finally, the amendments to the Trademarks Act will allow Canada to adhere to the Madrid Protocol, an international trademark registration system. The Madrid Protocol simplifies the filing of corresponding trademark applications in foreign countries once an applicant has a home country application or registration.

Currently, Canadian companies seeking to obtain registered trademark protection in various countries outside of Canada must file trademark applications in each jurisdiction. With the implementation of the Madrid Protocol, it will be possible to file corresponding trademark applications in multiple foreign jurisdictions and countries through a single “international” application. Similarly, foreign applicants seeking international trademark protection will have the opportunity to designate Canada under the Madrid Protocol.

Canada’s adoption of the Madrid Protocol will permit trademark owners, including those in the pharmaceutical industry, to realize the advantages of this simplified international filing system. Not only will applicants have easier access to trademark protection in foreign jurisdictions but the more efficient, centralized application process will result in financial savings.

Summary

The upcoming changes to Canadian trademark law, including the implementation of the international treaties, will help to modernize Canada’s trademark system and bring the country in-line with international standards. Trademark owners should ensure that they understand the implications of the new legislation and adjust their trademark protection strategies accordingly.

For more information, please contact:

T: 613-567-0762
E: trademarks@mbm.com

Author: Erin Creber, Associate, 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.

The Impact of Expanded Regulations Under CETA on Geographical Indications and Your Brand

Posted on by Debbie Malek

Trademarks are a part of our everyday life. A trademark protects a combination of letters, words, sounds or designs that distinguishes one’s goods or services from those of another in the marketplace. There are specialized trademark rules, including those relating to Geographical Indications (“GIs”) that have the potential to impact specific industries. For example, recent changes in GI law could significantly alter how a wine, spirit, agricultural product or food producer approaches their branding and marketing efforts.

A GI[1] is an indication that identifies a wine or spirit, or an agricultural product or food, as originating in a specific territory. The GI must also be associated with a particular quality, reputation or other characteristic of the wine or spirit or the agricultural product or food that is attributable to its geographical origin. Essentially a GI can add value to your product as it certifies that the product possesses certain qualities or reputation, because of where the product was created. We are all familiar with some common GIs including Champagne (an alcoholic drink produced from grapes grown in the Champagne region of France); Port (a Portuguese fortified wine produced exclusively in the Douro Valley in the northern provinces of Portugal); and Cognac (a variety of brandy named after the town of Cognac, France, produced in the surrounding region).

Prior to Canada-European Union Comprehensive Economic and Trade Agreement (“CETA”)[2], which came into force on September 21, 2017, GIs were used to protect only wines and spirits. CETA implementation has resulted in amendments to the Canadian Trademarks Act (“Act”) that expanded the protection afforded by the Act to a wider range of products to which GIs (including translations of these GIs) can now apply. Certain agricultural products and foods are now afforded the same protection. The amendments have automatically granted GI status to a number of products including Brie de Meaux, and Huile d’olive de Haute-Provence, providing them with legal recognition, and exempting them from objection and cancellation proceedings.

Certain more commonly used GIs have been afforded a more limited type of protection (such as Feta, and Asiago).[3] Users of these particular marks will be exempt from cancellation proceedings if they have been using the mark for 10 years (starting before October 2013), have previously had indications granted, or currently have an applied-for or used trademark on file. As a producer of these products, there is some risk in relying on this exemption. The specific GI use must qualify as trademark use as defined by the Act, otherwise you will not qualify for the exemption. You will also be able to continue to use the more common GIs if they are accompanied by a qualifying term such as “kind”, “type”, “style” or “imitation”.[4] The geographical origin must also be clearly displayed on the packaging in which it is distributed.

A third category of commonly used GIs such as Parmesan, Black Forest Ham, and Valencia Orange can be adopted, used or registered as a trademark without penalty.[5] Additionally, these GIs can be used in comparative advertising that is not placed on labels or packaging, or in the instance that consent was given by the ‘Responsible Authority’.[6]

The implementation of CETA has also provided the Federal Court with exclusive jurisdiction to order the removal of a GI, a procedure which did not previously exist. Moreover, there is a process by which a ‘Responsible Authority’ can apply to have a new GI added to the GI List[7] and includes the following steps:

1. Filing a request with the Trademark Office;

2. Trademark Office reviewing your request;

3. Trademark Office putting out public notification of the GI;

4. Going through an objection proceeding (if a proceeding is initiated[8]); and

5. Entering the new GI on the Official GI list.

If you reference a GI on any of your products, it is important you understand how these rules can impact your business. Contacting an experienced professional who can help you in this understanding could end up being the difference between protection of your brand, and the loss of it.

For more information, please contact:

T: 613-567-0762
E: trademarks@mbm.com

Author: David Lotimer, 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.

[1] Defined in Section 2 of the Trade-marks Act, R.S.C., 1985, c. T-13, (the “TM Act”).

[2] See http://www.international.gc.ca/gac-amc/campaign-campagne/ceta-aecg/index.aspx?lang=eng for additional information on the Comprehensive Economic and Trade Agreement.

[3] See Section 11.15 and Schedule 6 of the TM Act.

[4] See Section 11.17 of the TM Act.

[5] See Section 11.18 of the TM Act.

[6] Defined in Section 11.11(1) of the TM Act.

[7] View the current list at http://www.ic.gc.ca/cipo/listgiws.nsf/gimenu-eng?readForm.

[8] See Section 11.13 of the TM Act.

CETA agreement and the Canadian patent landscape

Posted on by Debbie Malek

On September 21, 2017, The Canada-European Union (EU) Comprehensive Economic and Trade Agreement (CETA) came into force.

Three areas part of the CETA agreement relating to a range of issues in Canadian patent protection are worth noting:

1. Certificate of Supplementary Protection Regulations

2. Regulations Amending the Patented Medicines (Notice of Compliance)

3. Amendments to the Patent Rules

1. Certificate of Supplementary Protection Regulations: the Certificate of Supplementary Protection Regulations (CSP Regulations) were created to provide additional protection for patent-protected pharmaceutical products. The new Certificate of Supplementary Protection (CSP) regime will provide additional period of patent-like protection for drugs containing a new medicinal ingredient or a new combination of medicinal ingredient. The CSP Regulations provide various timelines, requirements and procedures needed to carry out the regime and are defined in sections 104-134 of the Patent Act. The additional protection term under CSP can be calculated as the difference between the patent filing date and the Notice of Compliance date, reduced by 5 years, up to a maximum of 2 years (i.e. CSP term = [Notice of Compliance date – Patent filing date] – 5 years, with a cap of 2 years). The additional protection period under this regulation will take effect from the patent expiry date.

2. Regulations Amending the Patented Medicines (Notice of Compliance): These amendments were made to address a number of issues described below and to meet Canada’s obligations under CETA:

  • to resolve a number of problems by replacing summary prohibition proceedings with full actions to determine patent validity and infringement;
  • to expand the scope of the PMNOC Regulations to cover relevant Certificate of Supplementary Protections by providing an additional period of protection for new patented pharmaceutical products;
  • to help expedite proceedings by introducing a limited number of procedural rules, while still leaving the Court broad discretion to manage proceedings;
  • to address concerns about how damages arising from delayed generic drugs market entry are currently addressed; and
  • to remove barriers that may prevent innovators and generics from litigating certain patents outside the PMNOC Regulations prior to generics entering the market.

3. Amendments to the Patent Rules: Based on the recent amendments, section 29 of the Patent Act is being repealed and those provisions under the Patent Rules that refer to appointment of the representative under this section of the act are also being removed. The repealed provisions under the Patent Rules are section 78, clause 94(2)(b)(ii)(I), subparagraph 94(3)(b)(vi) and paragraph 148(1)(d). As a result, information regarding appointment of a representative is no longer required for completion of a patent application or the national phase of a patent application. To reflect the change, Form 1 (Application for Reissue) and Form 3 (Petition for a Grant of Patent) are also replaced to delete references to representative appointment required under section 29 of the Patent Act.

For more information, please contact:

Randy Marusyk, Co-Managing Partner
T: 613-801-1088
E: rmarusyk@mbm.com

Co-Author: Hyun Woo Choi

 

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.

New LCBO Subsidiary to Control Cannabis Sales in Ontario

Posted on by Debbie Malek

In response to the imminent legalization of recreational use of cannabis in Canada as proposed by the Parliament in Bill C-45, the Cannabis Act, the Ontario government released a detailed plan on distribution system and usage regulations of recreational marijuana in a document titled “Ontario’s Safe and Sensible Framework to Federal Cannabis Legislation” on September 8, 2017.

The centerpiece of this proposal is to create a subsidiary of the Liquor Control Board of Ontario (LCBO) to hold monopoly over cannabis retail and online sales in Ontario. This approach, as Attorney General Yasir Naqvi said, will focus on ensuring “a safe and sensible transition” to federal legalization. However, the LCBO operated subsidiary will be the single buyer of marijuana producers and the exclusive distributor to consumers. This inevitably puts it at a dominant position to make decisions on market entrance credentials, quality controls, retail prices and geographical accessibility. Private investors will not be allowed to open and operate cannabis retail stores and consumption premises in Ontario for the time being. The monopoly will also make smaller marijuana producers difficult to compete with powerhouses as Aphria Inc. (TSX: APH) and Canopy Growth (TSX: WEED), two of the country’s biggest marijuana producers.

WHAT ARE THE KEY ELEMENTS OF THE PROPOSED FRAMEWORK?

  • The LCBO will establish a new subsidiary to exclusively oversee the distribution of cannabis in Ontario through retail stores physically separate from existing LCBO liquor stores and an online order service.
  • Approximately 150 retail stores will be opened by 2020, including 40 in July 1, 2018 and another 80 by July 1, 2019. The stores will run similar to tobacco sales as behind-the-counter model and there will be no self-service.
  • The locations of these retail stores will be determined in consultation with municipalities. The guideline is to target areas with illegal marijuana dispensaries to crush black market.
  • The LCBO operated website for online orders will be available by July 1, 2018. It will make recreational marijuana accessible to residents far away from retail stores.
  • Pricing and taxation decisions will come later. The anticipated profits will be modest, especially at the beginning stage with necessary infrastructure and personnel training costs.
  • The use of recreational marijuana will only be permitted in private residences. The consumption of any form of recreational cannabis in public places, workplaces or when inside a motor vehicle will be prohibited.
  • The Ontario Government will explore the feasibility and implications of introducing designated establishments where recreational cannabis could be consumed.
  • Cannabis dispensaries currently operating in Ontario are not and will not be legal retailers. These shops will be shut down through a coordinated and proactive enforcement strategy with municipalities and police forces.
  • Ontario will set the minimum age for possessing or consuming recreational cannabis at 19, same as the current alcohol restrictions. The Government of Canada in Bill C-45 proposed the age of 18. Other rules and restrictions for distribution of cannabis will be strictly in keeping with federal rules and regulations.

HOW WILL THIS FRAMEWORK AFFECT CANNABIS INVESTORS, PRODUCERS AND CONSUMERS?

  • The safety concern is legit and marijuana should still be a tightly controlled substance after its legalization. However, the proposed monopoly model may not benefit interested parties except the Ontario government, LCBO and labour unions. This framework may deter potential investors, hamper smaller producers and drive consumers to black market.
  • Private-owned retail stores and cannabis lounges will not be allowed in Ontario according to the proposed framework. For investors, the investment opportunity is limited to marijuana production. Therefore, if some other provinces and territories present less stringent rules and regulations, Ontario would be less attractive to potential investors.
  • For marijuana producers, the monopoly model strongly favours giant corporations who have financial resources, lobbying power and business expertise to strike a supply contract with LCBO. Smaller producers may face obstacles to put their products on the shelves of legal retail stores, same as what happened to small craft brewers in Ontario under the current alcohol distribution monopoly.
  • The shut down of currentprivate-owned stores selling cannabis and business premises will make many people lose the only source of income. If the new LCBO subsidiary is not able to accommodate these people into the system, many of them may not leave cannabis business and choose to go underground. That, in return, will significantly increase the law enforcement costs and endanger the public.
  • For consumers, forty stores at the beginning stage made accessibility a big concern, especially for those who are unable to travel without assistance and having difficulty to put an online order. Furthermore, if the retail prices in legal stores are significantly higher than the black market, many consumers may simply pick the cost-effective way. It is hard for the law enforcement to tell illegal marijuana products from those purchased from legal retail stores

 

For more information, please contact:

Randy Marusyk, Co-Managing Partner
T: 613-801-1088
E: rmarusyk@mbm.com

Co-Author: Yang Wang

 

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.

Intellectual Property Licensing: A Win-Win Agreement

Posted on by Debbie Malek

There are several benefits associated with protecting your valuable intellectual property (‘IP’) through registration. Owners often view registration of their patents, trademarks, copyright and other IP as a way to prevent third parties from using their proprietary idea, brand name or computer code. This is a valid consideration; however it is not the only benefit to an IP owner.

Licensing IP can be a very valuable additional income source to a business, and can be the conduit by which lucrative partnerships are created.

The World Intellectual Property Organization (‘WIPO’) categorises a licensing agreement as “a partnership between an intellectual property rights owner (licensor) and another party who is authorized to use such rights (licensee) in exchange for an agreed payment (fee or royalty).”[1] In this way, a licensor is able to obtain monetary gain from his or her IP by providing permission to a licensee to use that IP. The specifics of this permission can be particular to suit the needs of the parties.

Some factors to consider include:

Exclusivity – a license to use IP may be exclusive to one licensee. Exclusivity is often viewed favourably by a licensee as it provides surety that other competitors will not be able to use the IP for their own business purposes. Alternatively, the license agreement may stipulate that the license to use the IP is non-exclusive. This may be favourable to the licensor as it provides them with an opportunity to enter into several different licensing relationships using the same IP, potentially deriving multiple income sources for use of the same technology.

Jurisdiction/Territory – a licensing agreement can be jurisdictionally specific, in other words, you may select the specific territory, region, area or country in which the license will be valid. Some companies elect to negotiate a worldwide license allowing the licensee more freedom to use the IP in the jurisdiction of their choice. Others limit the IP use to a specific country in order to prevent the licensee from entering into their own market.

Transferability/Sublicensing – it is possible for a licensor to provide a licensee with the ability to sublicense the IP themselves. The licensor may require that such sublicensing be approved, and structured such that sublicense fees will be paid to the IP owner. The licensor may also elect to provide a non-transferable license, which allows the IP owner to keep complete control of which parties are able to legitimately use the IP.

Term – the term of the licensing agreement can be a defined length, renewable, based upon other conditions (such as licensing fees, production targets, licensor election, etc.), or perpetual. A conditional term can act to motivate a licensee to achieve certain business targets that ultimately provide financial benefit to both the licensee and licensor.

Fees – license fees come in many forms including upfront payments, recurring annual or monthly fees, royalty based, or a combination of these options. It is possible to create a license fee payment structure that mitigates risk and rewards strong performance, or penalizes poor performance. A fee structure (like term structure) can act to motivate a licensee towards success in their own business.

Field of Use –the rights granted to use the IP may be limited to a specifically defined field. In this way the licensee is only able to use the IP for a particular commercial purpose and the licensor will maintain the right to directly exploit or license the same IP in a different field of use.[2]

Type of Licensed IP – the type of IP licensed will also impact how the license agreement is developed. The permitted use and control of a patented technology can be significantly different to the permitted use and control of a trademark, and the obligations on each of the parties to the agreement need to reflect the particular licensed IP.

Ownership of Licensed IP Developments – once a licensee is able to use a licensor’s IP, it is important to consider how developments and improvements to the licensed IP will be controlled, particularly when it comes to ownership. It is possible to impose conditions upon the license that require all developments of the licensed IP to be owned jointly by both parties to ensure the spoils of newly created IP is realized equally.

The benefits of IP licensing are several and apply to all parties involved. A licensor may be able to form partnerships to expand the reach of their own business, or may secure an additional income stream. A licensee may expand their business by utilizing technology they were not previously able to use. There are many other options to further address the factors discussed above, and the specifics can be manipulated to better suit each particular licensing relationship.

When developing an IP License Agreement, consider consulting a trained IP specialist with experience negotiating and formulating these agreements. With his or her help, it is likely both you as an IP owner and the licensee of your IP will find yourselves part of a win-win agreement.

 

For more information, please contact:

T: 613-567-0762
E: trademarks@mbm.com

Author: David Lotimer, 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.

 

[1] ‘Licensing of Intellectual Property Rights; a Vital Component of the Business Strategy of Your SME’, World Intellectual Property Organization, http://www.wipo.int/sme/en/ip_business/licensing/licensing.htm.

[2]‘Fact Sheet – Commercialising Intellectual Property: License Agreements’, European IPR Helpdesk, www.iprhelpdesk.eu, November 2015.

 

Are you trying to decide whether to register your Industrial Design in Canada?

Posted on by Debbie Malek

A Canadian Industrial Design registration protects original visual features of shape, configuration, pattern or ornament, or any combination of these features, applied to a finished product. Industrial designs are commonly used to protect the outside shape and design of a wide variety of mass produced articles from light fixtures to kitchenwares. Industrial Designs do not protect functional features, they only protect a product’s appearance.

When you register your Industrial Design, you gain exclusive, legally enforceable rights in Canada for five years from the date of registration, and extendable to 10 years with payment of a maintenance fee. You may sell your rights or license others to make, use and sell your design.
In Canada there is a one year grace period to file an Industrial Design application after you make your design public anywhere in the world. It is still recommended to file an Industrial Design application as soon as possible since the design must be original and cannot closely resemble another person’s previously released design.

A Canadian Industrial Design application typically includes multiple views of the “finished article” representing the product in an assembled state. The views can be shown in photographs, but more commonly line drawings are used to ensure the design features are clearly captured. While only one view is required, please note that only features of the design included in the views provided are protected. Typically 6 views are recommended: top, bottom, front, back, left side, and right side. In some cases a perspective view is included, and identical views (e.g. identical left and right side views) may be represented by one of the two identical views.

…Outside Canada…

If you also plan to sell your products outside of Canada, then you might consider filing a Design Patent in the United States or a Community Design in the European Union. The first design application may support a priority claim in foreign countries as long as corresponding applications are filed within six months of the filing date of the first design application. For instance, a Design Patent may be filed in the United States, and within six months an Industrial Design application may be filed in Canada and claim the benefit of the earlier U.S. filing date. Using priority filings can simplify the process of filing multiple design applications in different countries.

So Should You Register An Industrial Design?

Registering an Industrial Design in Canada is an investment to help protect the appearance of your products. Obtaining an Industrial Design in Canada is much less expensive and time consuming than obtaining a patent making this an economical and effective form of industrial protection. While Industrial Designs only protect the look of a product, and not its function, in many cases the outer form of a product is part of its identity and marketability.

If you have any questions about Canadian Industrial Designs or are ready to start an Industrial Design application, please do not hesitate to contact us. We are always happy to help.

For more information, please contact:

T: 613-567-0762
E: general@mbm.com

Author: Etienne de Villiers, Of Counsel

 

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.

 

 

Regaining Trademarks That Were Lost in Translation in China

Posted on by Debbie Malek

In China, international companies and celebrities have often found themselves on the losing side in trademark or name right disputes. One reason is that an English word can be translated in Chinese either phonetically or conceptually, and there are usually multiple Chinese characters with the same pronunciation to choose from. Another reason is that the Chinese trademark system is a first-to-file system same as in Canada, but prior-use is not a reasonable ground to displace a registered trademark.

The original English names (e.g. Jordan) may be hijacked by local companies by using variation forms of the phonetics in English (e.g. Qiaodan) or the translation in Chinese characters (e.g. 乔丹). These variations are difficult to distinguish from the original names by local customers since the majority of the Chinese population does not speak or read English, especially seniors and people living in rural areas. For international companies and celebrities, the Chinese courts need to be convinced that their trademarks and names are recognized as “famous”, which is a tremendously difficult threshold to establish.

China has started taking intellectual property rights more seriously because Chinese companies, such as Huawei, Lenovo, and Haier, are becoming powerhouses of valuable intellectual property. In recent trademark cases, we have observed a trend that the Chinese courts are now more willing to consider the brand reputation developed by previous use outside of China. Below are a few notable cases:

Michael Jordan v Qiaodan Sports Co. Ltd.

In China, the retired basketball superstar Michael Jordan is known as “乔丹”, the most common Chinese translation of his last name. In 2001, a local sportswear manufacturer Qiaodan Sports registered a number of trademarks including “乔丹” and “QIAODAN”. Michael Jordan sued for infringement of his name rights after finding that Qiaodan Sports brought in $276 million in revenue in 2012. The trial court ruled that “Jordan” is a common English name which is not uniquely associated with Michael Jordan. Furthermore, the use of one version of the English translation does not necessarily constitute infringement. Michael Jordan later on appealed this decision.

In December 2016, China’s Supreme People’s Court overturned earlier rulings. The court found that a strong link between “乔丹” and Michael Jordan personally was established in China before Qiaodan Sports had maliciously registered “乔丹”. The company was fully aware of Michael Jordan’s reputation in China and enriched by passing off. Therefore, the Supreme People’s Court invalidated the “乔丹” trademark registration. Meanwhile, the court held that the link between “QIAODAN” and Michael Jordan has not been established, as naturally Michael Jordan would not have used “QIAODAN” in any manner.

New Balance v New Boom, New Barlun, and New Bunren

In 2017, the Suzhou Intermediate People’s Court has ordered five shoe manufacturers using the name New Boom and the signature slanting “N” logo to pay $250,000 in fines to the state and an undetermined amount to New Balance. Another Chinese court had awarded New Balance $550,000 against companies making New Bunren brand shoes. We are still waiting for the outcome of an outstanding case against the brand New Barlun.

Most international companies do register their English brands when entering the Chinese market. However, what’s often forgotten, or deemed less important, is the registration of Chinese translations. This overlooking may cause significant economic losses eventually as a registration for the English words will not automatically extend to the Chinese translations.

Recent court decisions serve as encouraging precedents to international brand owners. The Supreme People’s Court is more willing to consider all relevant circumstances, in particular the fairness and commercial value behind the name or trademark. It also worth to mention that the Chinese Trademark Office has granted preliminary approval for nine Donald Trump trademarks it had previously rejected. The key to success is to present sufficient evidence to establish the link between the original names and Chinese translations, and show bad faith on the part of the trademark squatter. Recent cases emphasize the need for international companies and celebrities to identify and register Chinese translations or transliterations of their trademarks and names as soon as possible, in order to ensure that they are protected against trademark squatters.

For more information please contact:

Scott Miller, Co-Managing Partner, Head of the Litigation Department
T: 613-801-1099
E: smiller@mbm.com

Co- Author: Yang Wang

 
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

 

Contractors and the Legal Ownership of your Intellectual Property

Posted on by Debbie Malek

Many entrepreneurs and small business owners exhibit an extraordinarily high level of motivation. They are individuals with the wide-ranging skill set that is necessary to achieve success in their chosen field. One of the most important characteristics of these leaders is the ability to recognize their own deficiencies and to identify a capable person to fill that void within their team. If they’re lucky these individuals will sign on to be a part of the team full time as an employee, however many teams are filled with freelance developers, contractors, consultants and the like. Utilizing these less permanent team members can be cost effective and can help to bolster the capabilities of your company. However it can also create legal issues relating to intellectual property ownership.

It important to protect the legal rights associated with intellectual property developed by you and your team, and to ensure that you are not breaching the legal rights of others. It is also important to ensure that your company legally owns the valuable assets you and your team have created. Clear ownership rights comfortably allow you to use, license and sell the inventions, products, and software developed by your team.

Generally when an employee contributes to work done for the employer in the context of their employment, all work product of that employee will automatically be owned by the employer. However ownership rights are slightly murkier when a non-employee is involved in the creation of work product.

What happens for instance when a contractor creates a website for your company based on a template she produced prior to her engagement? What if a software developer uses source code originally created during his engagement with another company in the creation of a new platform for your business? How will ownership rights in a logo created by a graphic designer be distributed? The relationship between employers and non-employees can bring about these types of work product ownership questions.

But don’t fret – there are many ways to structure a relationship with a non-employee in order to protect your business and to guarantee your ability to use the work product created for your company.

Clear intellectual property ownership clauses within a contractor agreement can provide you with confidence in legal ownership of work product. Disclosure and liability obligations related to third party material used within contractor developed work product can be essential to protect your company from legal attacks. Intellectual property licensing can help define invention contributions and allow your company to legally incorporate previously developed intellectual property into your own creations. These are but a few of the strategies you can utilize to clarify ownership rights with non-employees.

The next time you look to fill out your team with a specialized contractor, consider obtaining the advice of an intellectual property expert. We can help you structure the relationship so that you can confidently work with a non-employee, and allow you to get back to focussing on driving the success of your business.

For more information, please contact:

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

Author: David Lotimer, 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.

Supreme Court of Canada Upholds Order for Google to Block Search Results Globally

Posted on by Debbie Malek

The Supreme Court of Canada recently issued its decision Google v Equustek (2017 SCC 34) upholding the British Columbia Court of Appeal’s decision to grant an interlocutory injunction requiring Google, a non-party to the underlying action, to block certain search results on its Internet search engine on a worldwide basis. In granting the appeal, the Supreme Court of Canada has held it is within the power of Canadian courts to issue injunctions with extraterritorial effect, so long as it is just and equitable to do so. This is an important decision for intellectual property owners, as it provides a new mechanism to combat infringers.

Background

Equustek is a small technology company based in British Columbia that brought an action against its distributor, Datalink. Datalink had re-labelled one of Equustek’s products and was passing it off as its own. Datalink also acquired confidential information and trade secrets belonging to Equustek and was using this information to design and manufacture a competing product.

The Court issued an interlocutory order prohibiting Datalink from selling its inventory and using any of Equustek’s intellectual property. However, Datalink continued to carry on business from an unknown location, and sell its infringing products via the Internet to customers around the world.

To prevent Datalink from continuing its infringing activities, Equustek approached Google, and requested that Google de-index (i.e. block from search results) all of Datalink’s websites promoting the sale of Datalink’s counterfeit goods.

Google initially refused the request, complying only once a Court order was issued. Pursuant to its internal policies, Google voluntarily blocked individual webpages but not entire websites. Further, Google only blocked Canadian search results.

Datalink easily circumvented the measures taken by Google by simply moving the objectionable content to new webpages within its websites. Throughout this time, Datalink webpages remained available on Google’s non-Canadian search engines, e.g. Google.com.

Consequently, Equustek sought, and was awarded, an order requiring Google to block all Datalink websites globally.

The Decision

In a 7-2 decision, the Supreme Court of Canada upheld the British Columbia Court of Appeal’s ruling that Google must block all Datalink websites on a worldwide basis.

In reaching this decision, the Court considered the RJR MacDonald v Canada three-part test for granting an interlocutory injunction. It was held (i) there was a serious issue to be tried, (ii) irreparable harm would result if the injunction was not granted, and (iii) the balance of convenience did favour granting the injunction.

Justice Abella recognized that the infringing activities in this case were occurring globally, as the Internet has no borders. Google was deemed to be a determinative player in allowing harm to occur to Equustek as a result of Datalink’s activities. Upholding the order against Google was deemed necessary to prevent the irreparable harm that flowed from Datalink carrying on business on the Internet, a business which would be commercially impossible without Google’s facilitation.

Regarding the balance of convenience, the Court rejected Google’s arguments that an injunction cannot be directed at a non-party, an injunction with extraterritorial effect would violate comity, and that the injunction in this case was in effect a permanent injunction. In doing so, the Court indicated that it was within Google’s power to seek an order varying the injunction if there was any risk that compliance with the injunction would violate the laws of another jurisdiction.

Conclusion

This decision confirms that Canadian courts have the ability to issue interlocutory injunctions directed against non-parties, and signifies the Supreme Court of Canada supports the broad implementation of such injunctions, provided it is just and equitable to do so.

 

For more information, please contact:

T: 613-567-0762
E: trademarks@mbm.com

Author: Erin Creber, Associate, 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.

 

The Supreme Court of Canada Knocked Down the “Promise Doctrine” for Determining Utility

Posted on by Debbie Malek

Today, the Supreme Court of Canada, in AstraZeneca Canada Inc. v. Apotex Inc., 2017 SCC 36, has determined that the Promise Doctrine is not the correct method of determining whether the utility requirement under s. 2 of the Patent Act is met, and upheld the utility of the appelants’ 2,139,653 patent.

The Promise Doctrine holds that if a patentee’s patent application promises a specific utility, only if that promise is fulfilled, can the invention have the requisite utility, but where no specific utility is promised, a mere scintilla of utility will suffice.

The Court has found that the Promise Doctrine is excessively onerous in two ways: (1) it determines the standard of utility that is required of a patent by reference to the promises expressed in the patent; and (2) where there are multiple expressed promises of utility, it requires that all be fulfilled for a patent to be valid.

First, the Court found that the Promise Doctrine conflates s. 2 of the Act (which requires that an invention be “useful”) and s. 27(3) (which requires disclosure of an invention’s “operation or use”), by inappropriately requiring that to satisfy the utility requirement in s. 2, any disclosed use (by virtue of s. 27(3)) be demonstrated or soundly predicted at the time of filing. If that is not done successfully, the entire patent is invalid, as the pre-condition for patentability — an invention under s. 2 of the Act — has not been fulfilled.

Second, the Court found that the Promise Doctrine runs counter to the words of the Act by requiring that where multiple promised uses are expressed, they all must be satisfied for the patent to meet the utility requirement in s. 2.

The Court established the correct approach to utility as follows:

  • [54] To determine whether a patent discloses an invention with sufficient utility under s. 2, courts should undertake the following analysis. First, courts must identify the subject-matter of the invention as claimed in the patent. Second, courts must ask whether that subject-matter is useful — is it capable of a practical purpose (i.e. an actual result)?
  • [55] The Act does not prescribe the degree or quantum of usefulness required, or that every potential use be realized — a scintilla of utility will do. A single use related to the nature of the subject-matter is sufficient, and the utility must be established by either demonstration or sound prediction as of the filing date.

With respect to the ‘653 patent, the Court stated that the utility of the optically pure salts of the enantiomer of omeprazole as a proton pump inhibitor to reduce production of gastric acid (the subject matter of the ‘653 patent) was soundly predicted. The ‘653 patent is therefore not invalid for want of utility.”

Today’s long-awaited decision places Canada back in-line with international standards, and provides greater certainty to patentees and to patent prosecutors and litigators.

 

For more information, please contact:

Suzanne Hof, Senior Patent Agent
T: 613-801-0510
E: shof@mbm.com

Poonam Tauh, Partner, Patent Agent
T: 403-800-9018
E: ptauh@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.

 

Top Top