News

Trademark registration and a search for prior use

Your brand is a way for your customers to identify and distinguish your goods and services from that of some else’s goods and services. Businesses therefore safeguard their brand with the registration of one or more trademarks.

When registering for a trademark, it’s important to do a search to find out if there’s another party that may also be using a confusingly similar mark somewhere else in Canada.

As the Supreme Court of Canada held last week in Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27, in order for the owner of a registered trademark to have exclusive use of the trademark throughout Canada, there cannot be a likelihood of confusion with another trademark anywhere in the country.

In view of this recent ruling, it is recommended that a search be done before filing for a trademark registration in order to properly determine whether or not the registration is likely to succeed.

A Canadian’s right to access information held by the government

Under Canada’s Access to Information Act, in general any Canadian citizen or permanent resident may request and may be given access to any record under the control of a government institution.

The Act includes a list of all such “government institutions”, which includes for example the Department of National Defence, the Department of Health, the Department of Justice, and the Royal Canadian Mounted Police, but does not include ministerial offices for any of the listed Departments.

However, records located within ministerial offices for any of the listed Departments may nonetheless be subject to disclosure if the record relates to a departmental matter, and if a senior official of the government institution could reasonably expect to obtain a copy upon request (Canada (Information Commissioner) v. Canada (Minister of National Defence), 2011 SCC 25).

Journalists, lawyers, and Canadians of all walks of life have relied on Access to Information requests to obtain enlightening information from a sometimes reluctant government.  If you need help with enforcing an Access to Information request, a lawyer may be able to help.

SCC will hear copyright in education case

Under the Copyright Act, anyone can make non-infringing use of copyrighted material provided the use is made for an allowed purpose and is fair.  This is known as fair dealing.  Allowed purposes under the Copyright Act include “research or private study” and “criticism or review”.

Late last year, the Federal Court of Appeal held in Alberta (Education) v. Access Copyright, 2010 FCA 198, that the tribunal “Access Copyright” made no error when it determined that the photocopying of excerpts from textbooks for use in classroom instruction for students in kindergarten to grade 12 was not fair dealing.  This is a major win for copyright holders as it clarified their scope of copyright in the context of education.

Today, the Supreme Court of Canada announced that it will hear an appeal of the Federal Court of Appeal’s decision in Alberta (Education) v. Access Copyright.  The outcome of this appeal, in addition to the landmark case of CCH v. LSUC, 2004 SCC 13, could clarify the law of copyright in Canada for years to come.

The New Consumer Product Safety Act

Late last year, the Canada Consumer Product Safety Act was enacted into law, as part of the government’s effort to protect the public from dangers to human health or safety from both imported and domestic consumer products.  The Act is expected to come into force on June 20, 2011.

Companies that manufacture, import, advertise or sell goods such as baby walkers, kite strings that may conduct electricity, lawn darts, and bisphenol A baby bottles need to be aware that this Act specifically prohibits these goods for sale in Canada.

Other notable aspects of this Act include a duty to report health and safety incidents and the power for mandatory recall orders, which will be discussed in a later post.

Patents claiming a method of doing business – Appeal to be heard in June

As posted earlier, the Federal Court in Amazon v. Canada, 2010 FC 1011 held that a method of doing business (a “business method”) can be patentable subject matter. The Department of Justice on behalf of the Canadian Intellectual Property Office is appealing this decision to the Federal Court of Appeal, in court file A-435-10.

The Court of Appeal has now confirmed that the appeal hearing will be heard in Toronto (not Ottawa as previously reported) on June 21, 2011 at 9:30am. A decision should be rendered before the end of 2011. Depending on the appeal decision, we may see the Supreme Court grant leave to tackle this issue in 2012.

The evidentiary standard for challenging US patent validity

Yesterday, the US Supreme Court wrapped up oral arguments for Microsoft Corporation v. i4i Limited Partnership, in which i4i sued Microsoft for patent infringement. This case has attracted worldwide attention, not only because the infringing product (MS Word) is widely used, but also because the Supreme Court’s ruling will determine the evidentiary standard to which the validity of all US patents will be determined in the future.

Under 35 U.S.C. § 282, an issued patent is presumed to be valid (in other words, it’s assumed to be novel and non-obvious).  Since the 1980s, the Court of Appeal has held that this presumption of validity may only be rebutted with evidence meeting a “clear and convincing” standard.

Microsoft, having lost at the trial level and at the Court of Appeal, argues that the “clear and convincing” standard is too high and that the correct standard should be the lower “preponderance of evidence” standard.  Microsoft argues that the requirement for “clear and convincing” evidence was a requirement made solely by the Court of Appeal and was not the intent of Congress.

i4i, as the patent holder in this case, argues that maintaining the “clear and convincing” standard is necessary for protecting American innovation and inventors, and that Congress had implicitly endorsed the “clear and convincing” standard forwarded by the Court of Appeal by not enacting a law saying otherwise.

As an added twist, the specific evidence that Microsoft now seeks to introduce in order to argue that i4i’s patent is invalid was not previously considered by the US Patent Office during the prosecution of the patent application.  Thus, the Supreme Court may end up treating evidence previously considered by the US Patent Office differently than evidence not previously seen by the US Patent Office.

Despite the rhetoric about protecting American innovation, I think a certain amount of deference is due if the evidence introduced was already considered by the Patent Office during prosecution.  In my view, the higher “clear and convincing” standard should apply to evidence previously considered during prosecution, while the lower “preponderance of evidence” standard should apply for evidence not previously considered by the Patent Office.

A decision is expected from the US Supreme Court before the end of June 2011. Chief Justice Roberts recused himself, so the case will be decided by the remaining eight justices.  If the Supreme Court splits 4-4 then the “clear and convincing” evidentiary standard stands.

Be sure to question candidates on copyright reform

Update: The Harper Government fell in a non-confidence vote on March 25, 2011 at 2:20pm.

Later this week, the 40th Parliament will be dissolved and an election will be called.  Opposition parties are anxious to bring down the Conservative minority government, whether by voting against the budget or by a non-confidence vote for being in contempt of Parliament.

When Parliament is dissolved, every bill that has yet to be passed, including the current copyright reform bill C-32, An Act to amend the Copyright Act, will “die on the order paper”.  It will be up to the next Parliament to introduce a copyright reform bill, if they choose to do so.

This also means that copyright should become an election issue.  Whether or not you’re satisfied with bill C-32, now is the time to exercise your democratic muscle and express any concerns you may have with your (soon to be campaigning) Member of Parliament.  Be sure to question all of the candidates who are running in your riding about their views on copyright reform, digital locks and fair dealing, and compare their responses.  If you’re not satisfied with their answer, don’t vote for them.

(Interestingly, this also marks the third time that a copyright reform bill has died because of an election being called: Bill C-61 died in 2008 under the Harper minority government, and Bill C-60 died in 2005 under the Martin minority government).

Federal Privacy Commissioner outlines proposed changes to PIPEDA

In a previous post I outlined some of the priorities of Federal Privacy Commissioner Jennifer Stoddart as she enters her new 3 year term.

One of her priorities is to strengthen PIPEDA, the Personal Information Protection and Electronic Documents Act, when it faces a mandatory review by Parliament later this year.

The main items that Stoddart has hinted she’ll push for include increased enforcement powers for the Federal Privacy Commissioner and tougher penalties for companies found to have failed to comply with PIPEDA, including publicly naming violators.

With regards to enforcement and penalties, Commissioner Stoddart notes that Canada has “become one of the few major countries where the data protection regulator lacks the ability to issue orders and impose fines.”  In contrast, “the CRTC has the power to to impose fines for violations of the do-not-call rules (and recently slapped Bell Canada with a record-setting $1.3-million penalty).”  In addition, “there are significant fines – $10 million for businesses – provided for in the new anti-spam law.”  Furthermore, privacy regulators like the UK Information Commissioner and the Spanish Data Protection Agent all use their enforcement powers to successfully signal that privacy violations will be met with financial penalties.

Finally, Commissioner Stoddart candidly admitted that there is a growing discomfort with the secretive nature of privacy investigations under PIPEDA:

It seems to me that not naming names is robbing the Canadian public of much of the educational value of our investigative findings.

Who is paying your maintenance fees?

In Canada, an applicant applying for a patent must pay maintenance fees to the government, even when no patent has yet been granted. The first maintenance fee is due 2 years after the patent application is filed, and continues for the life of the patent and/or patent application.

However, just because maintenance fees are due to the government does not mean that anyone can pay them. In Unicorp v. Canada, 2011 FCA 55, a law firm tried to pay the maintenance fee for an patent, but as it was not the appointed agent for patent in question, the payments were refunded and were not applied to the patent. The patent was subsequently deemed to be irrevocably abandoned due to a failure to pay the required maintenance fee. The Federal Court of Appeal affirmed that the patent was irrevocably abandoned due to a failure to pay fees.

It’s thus important to remember that while remembering to pay maintenance fees are important, it is just as important to ensure that the person or entity paying the maintenance fee is the appointed agent, or is otherwise an authorized correspondent to the patent or patent application in question. In patent law, having money and paying it to the government isn’t enough; who pays the money is just as important.

Kik’s defence to RIM’s infringement lawsuit

Late last year, RIM sued Kik Interactive Inc., the maker of the popular cross-platform instant messaging client Kik Messenger, alleging breach of confidentiality, trademark infringement, and patent infringement.  At the same time, RIM also removed Kik Messenger from BlackBerry App World.

It’s been a long time coming, as we were expecting Kik’s statement of defence to be filed with the court at the end of December. Finally, on Monday Feb 7, 2011 (well after the 30 day deadline for Canadian defendants), Kik filed their defence and counterclaim after the Court granted them an extension of time.

I had a look at Kik’s Statement of Defence and Counterclaim today (available here, 7MB PDF).

Kik denies that it was developing a cross-platform instant messaging client in secret or had access to RIM’s BBM confidential documents, denies that it’s infringing on RIM’s trademarks or patents, and found prior art (EP093213, JP10013881, Outlook 2000, and a whole list of documents in Schedules A & B) which Kik alleges makes RIM’s asserted patents invalid.

Kik theorizes that as a result of the “overnight success of Kik Messenger”, “senior executives at RIM caused RIM to embark on a campaign to destroy or seriously harm Kik, including unilaterally terminating the various agreements between Kik and RIM, suspending and then removing Kik Messenger from BlackBerry App World and commencing this lawsuit, including a meritless patent infringement claim which RIM knew had no realistic chance of success.”

Kik portrays the suit as a classic case of Goliath picking on the poor small startup: “RIM employed a ‘bully’ like strategy, while Kik attempted to appease RIM…”.

Interestingly, in the statement of defence Kik asserted that Ted, the CEO of Kik, did not have access to the BlackBerry Messenger (BBM) source code while he worked at RIM’s BBM team as a Project Coordinator.  Kik also denies that Ted had access to RIM’s development plans, market research, and other internal reports related to BBM while working as part of RIM’s BBM team, as RIM had alleged in its statement of claim.  It’ll be very interesting to see exactly what documents Ted had access to or potentially had access to while working as part of RIM’s BBM team, and whether any of them led to his decision to develop a cross-platform instant messaging client in late 2009.

As with most lawsuits, the truth will come out during discovery and at trial, and will probably fall somewhere in between the allegations made in RIM’s statement of claim and Kik’s statement of defence.

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