Canadian Patent & Trademark Update: Trans-Pacific Partnership

Canada is currently negotiating with 11 other counties (Australia, Brunei, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, Vietnam, and the United States) in the Trans-Pacific Partnership (TTP) in hopes of eliminating tariffs on a variety of products. 

In regards to how this new agreement will impact our patent system, the Canadian Government states that this deal:

"Ensures patent protection for inventions in all fields of technology; Promotes transparent and efficient patent administration systems; Is in line with Canada’s current regime including criteria regarding patentability exclusion; and Ensures that exceptions under the World Trade Organization (WTO) Doha Declaration on Trade-Related Aspects of Intellectual Property Rights (TRIPS) continue to be available in line with Canada’s current laws."

As for our trademark system, the Canadian Government states that this deal:

"Provides protection against infringing use of trademarks, such as brand names and symbols; Fosters transparent and efficient rules and procedures across the TPP region; Is in line with Canada’s existing regime; and Supports Canada’s progress to accede to the Madrid Protocol and Nice Agreement."

Before this agreement can come into effect it still must be approved and is expected that it will be brought forth in the next session of Parliament. 

Canadian Trademark Update: Keywords For Online Advertising

As noted previously, as technology advances and evolves so must our laws and regulations.  This is the case when it comes to Canada’s trademark laws in regards to using keywords for online advertising.  Currently, advertisers can pay money to have services, such as Google AdWords, run their adds with the use of specific keywords.  In the recent case of Vancouver Community College v Vancouver Career College (Burnaby) Inc, 2015 BCSC 1470, the plaintiff, Vancouver Community College, claimed that the defendant, Vancouver Career College, violated their trademark by using the keyword VCC for their online advertising.  It came down to the application of the Law of Passing Off stating: 

[180]     To impose liability on the defendant for the tort of passing off the plaintiff must satisfy me that:

a)         it enjoys goodwill attached to the educational services it provides;

b)         its services have acquired a distinctiveness in the marketplace;

c)          the defendant has caused confusion by intentionally or otherwise misrepresenting its services as those of the plaintiff; and

d)         the plaintiff is likely to suffer damage as a result of the defendant’s misrepresentation. (2015 BCSC 1470)

The Supreme Court of British Columbia came to the following conclusion: 

In my view [Supreme Court of British Columbia], this lawsuit, … has been motivated by a concern that its own inability to invest the necessary funds and expertise to create a sophisticated online advertising program leaves it at a competitive disadvantage in the marketplace in comparison with the defendant. Passing off is a cause of action which permits a court, in appropriate circumstances, to compensate a plaintiff for unlawful competition by a defendant. It is not intended to be used by a plaintiff to handicap a defendant that has developed a more effective means of marketing its goods and services than has a plaintiff. (2015 BCSC 1470)

In this ruling, the Supreme Court found that using the keywords of the competition did not violate the plaintiff’s trademark as misrepresentation did not take place; rather, it was a savvy way for the defendant to be competitive.

Canadian Patent Update: Patent Prosecution Highway

In 2013 a pilot Patent Prosecution Highway (PPH) project was established between the Canadian Intellectual Property Office (CIPO) and the State intellectual Property Office (SIPO) in China.  This pilot project speeds up the process of obtaining corresponding patents in both countries.  It was recently announced that this PPH pilot program has been extend for another three years until August 31, 2015.  For information please visit the CIPO website.

Canada Patent Update: Patent Prosecution Highway

As of July 1st, 2015, Canada, Mexico, and the United States have collaborated in a two year pilot program for the Patent Prosecution Highway (PPH) to make procedures uniform in PPH applications.  The existing PPH application procedures in Canada remain the unaffected at this time.  As a result of the new pilot program, the existing pilot program between Canada and Mexico has been extended until June 30, 2016. For information please visit the CIPO website.

Canadian Patent Update: Patented Medicines (Notice of Compliance) Regulations

On June 19th the amendments to the Patented Medicines (Notice of Compliance) regulations were registered and came into force. As noted previously these amended regulations are due to inconsistency with the original intent of the PM(NOC) regulations which caused several patent applications claiming single medicinal ingredients in combination drugs to become ineligible.  Patents that were denied or deleted from the Patent Register between October 18, 2014 to June 19, 2015 due to this issue have 30 days from June 19th, to be resubmitted. The final amendments are expected to be published on July 1, 2015. (Privy Council Office)

Canadian Patent Update: Bill C-59

On June 23rd, Bill-C59, implementing the provisions noted in the Economic Action Plan 2015 such as privilege for patent agents and trademark agents, was granted royal assent. This privilege protects confidential communications between clients and their IP advisers from forced disclosure during litigation.  The privilege provisions (sections 54 & 66) of Bill-C59 will come into effect on June 23, 2016.

Canadian Patent & Trademarks Update: Bill C-59 & Priviledge

On May 7, 2015, Bill C-59 was introduced in parliament to implement provisions noted in the Economic Action Plan 2015. One of the significant changes that this bill puts forth in regards to intellectual property is to provide statutory privilege to patent and trademark agents.  This provision enable communications between registered Canadian patent agents and trademark agents, and their clients, to be privileged and confidential, where the communication is for giving or seeking advice for the protection of an invention or any trademark matter. Based on these conditions, this privilege will enable agents to maintain confidentiality with their clients by preventing disclosure in civil, criminal, or administrative legal actions.  These amendments come into effect 12 months after the Act receives royal assent.  It appears as though the Government would like to pass this Bill prior to Parliament rising for summer recess and so we may see it granted royal assent as early as June 2015.  Privilege will be retroactive, with the exclusion of any legal action that has already commenced.