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Federal Court of Appeal rules on non-infringing alternatives and apportionment as defences to an accounting of profits from patent infringement | 21 février 2017
by: Paul C. Jorgensen
On February 2, 2017, the Federal Court of Appeal released a significant decision on accounting for profits, a remedy for patent infringement in Canada: Apotex Inc v ADIR, 2017 FCA 23. The appeal concerned two defences raised by Apotex (and a related company)
CIPO shines spotlight on patenting in climate change mitigation technologies | 14 février 2017
by: Houston Brown and James Pan
With the Paris climate agreement having recently come into effect, climate change mitigation technologies have been the focus of widespread discussion and debate.
Rare Interlocutory Injunction Issued by Federal Court in Trademark Case | 10 février 2017
by: Daniel Anthony
In a significant decision issued yesterday, Sleep Country Canada Inc v Sears Canada Inc, 2017 FC 148, the Federal Court issued rare interlocutory relief to a Plaintiff in a trademark case.
New Date set for the Revision of Canada’s Trademark Law | 08 février 2017
by: Philip Lapin As we previously reported, Canada will be significantly changing its trademark law. The anticipated date for the implementation of the new law has been pushed back many times by the Canadian government. The most recent forecast from the government, which seems to have been provided with more confidence than previous forecasts, is that the new law is expected to come into force in early 2019.
Federal Court of Appeal affirms award of legal costs of $6.5 million in patent infringement case | 07 février 2017
On February 6, 2017, the Federal Court of Appeal affirmed a decision of the Federal Court concerning a costs award from the liability phase of a patent infringement action between the Dow Chemical Company (“Dow”) and NOVA Chemicals Corporation (“Nova”), 2016 FC 91.
Keeping those New Year's resolutions just got a little easier in Ontario | 02 février 2017
by: Andrea Kroetch
The Ontario Healthy Menu Choices Act and its Regulations, which became effective January 1, 2017, aims to allow Ontarians to make informed food and beverage choices when eating in a restaurant or purchasing take-away meals.
Keyword Advertising Decision Reversed on Appeal | 30 janvier 2017
by: Timothy Stevenson
The British Columbia Court of Appeal has issued an important decision regarding Canadian keyword advertising. The January 26, 2017 decision of the Court of Appeal in Vancouver Community College v Vancouver Career College (Burnaby) Inc confirms that purchasing a competitor’s trademark as a keyword will not alone be sufficient to cause trademark confusion. However, in some circumstances, confusion may arise when viewing the search engine results page and before reaching the defendant’s actual website.
Bill S-5: Canada Prepares to Introduce Plain and Standardized Packaging for Tobacco Products | 23 janvier 2017
by: Jennifer Ponton In 2012, Australia became the first country to have introduced plain packaging for cigarettes. Several countries have since followed suit, and many more, including Canada, have made commitments to introduce “plain and standardized packaging” measures to reduce the appeal of tobacco products. Following through on its commitment, Health Canada conducted a public consultation in the summer of 2016 on potential measures for regulating the appearance, shape and size of tobacco packages and of tobacco products.
Apotex’s Infringement of AstraZeneca’s Omeprazole Formulation Patent Upheld | 16 janvier 2017
by: Lynn Ing
The Federal Court of Appeal, in a unanimous decision released on January 12, 2017 (2017 FCA 9), has affirmed the validity of AstraZeneca’s Patent No. 1,292,693. The patent covered AstraZeneca’s successful product, LOSEC, for inhibiting gastric acid secretion and treating gastrointestinal diseases such as stomach ulcer.
Colourful designs and a streamlined practice get the green light in Canada | 16 janvier 2017
by: Christine Genge and Lionel Fishman
Today, the Canadian Industrial Design Office announced changes that significantly modernize and streamline six of its office practices, substantially benefitting applicants seeking protection for their designs in Canada.
Canadian IP law and practice in 2016: reviewing the highlights | 10 janvier 2017
by: Nelson Godfrey and Neil Padgett
As the calendar turns the page from 2016 to 2017, we take the opportunity to review Canadian IP law and practice highlights from the past year.
Smart & Biggar/Fetherstonhaugh announces new partners for 2017 | 04 janvier 2017
The partners of Smart & Biggar/Fetherstonhaugh are pleased to announce that Timothy Stevenson and Mark Pidkowich have joined the partnership.
Canadian Trademarks Office Begins to Issue Nice Classification Notices | 28 décembre 2016
Canadian trademark law will be significantly changed to adhere to several international treaties. Although the timing of the changes is uncertain, it appears that the changes are likely to come into force no earlier than 2018. Among the changes will be a requirement for all trademark applications and registrations to use the Nice classification system. Canada is one of the few countries in the world that does not currently require the use of the Nice classification system.
Smart & Biggar welcomes associates John Sparks and Franco Silletta | 28 décembre 2016
Smart & Biggar/Fetherstonhaugh is pleased to welcome associates John Sparks and Franco Silletta to the firm. John and Franco are two of seven associates who joined the firm in 2016.
Online Copyright Enforcement Gone Wrong – How To Get it Right | 21 décembre 2016
by: Erin Creber An elderly grandmother. A first-person shooter video game. The two typically have very little in common. Yet both were recently in the headlines of the national news. The story involved an email sent pursuant to Canada’s “Notice and Notice” copyright legislation, accusing the senior citizen of piracy and demanding that she pay an undisclosed settlement or risk a fine of up to $5,000. In today’s social media culture, controversial stories can quickly go viral, and no copyright owner wants bad press when seeking to enforce its rights. By consulting with Canadian counsel familiar with the ins and outs of the Notice and Notice legislation, rights holders can implement a successful enforcement strategy, while mitigating such risks.
Lights. Camera. Legal Action! – Jury finds iconic ‘Jersey Boys’ musical infringes copyright | 12 décembre 2016
by: Daniel Anthony
The creators of the hit Broadway musical Jersey Boys have been found liable for copyright infringement by a Nevada Federal Court jury.
CETA and IP Law Changes - Daphne Lainson weighs in | 09 décembre 2016
As previously reported, On October 31, the federal government introduced Bill C-30, an Act to implement the Comprehensive Economic and Trade Agreement. In a recent Law Times article, Smart & Biggar’s partner Daphne Lainson weighs in on the update and what it means for pharmaceutical patents.
Protecting Your Harvest in Canada: Naming and Registering Plant Varieties | 09 décembre 2016
by: John Sparks
Under Canada’s intellectual property laws, plant breeders may apply to protect their plant varieties by applying for a plant variety denomination pursuant to the Plant Breeders’ Rights Act. Similarly, Canadians may protect their brands by applying to register trademarks pursuant to the Trademarks Act.
Ekaterina Tsimberis présente à l’Université de Montréal, Centre de Recherche en Droit Public | 02 décembre 2016
Ekaterina Tsimberis s’est adressée à un auditoire organisé par le Centre de Recherche en Droit Public à l’Université de Montréal lors de la conférence Une nouvelle réalité internationale pour les marques au Canada.
Developing an effective Canadian patent filing strategy: Don’t let your U.S. continuation or continuation-in-part application give you continuing grief north of the border | 30 novembre 2016
by: Jeff Leuschner
Unlike in the U.S., there are no provisions for the filing of continuation or continuation-in-part (CIP) applications in Canada. However, rights seekers can still pursue and maximize protection by understanding and taking advantage of some of the differences between U.S. and Canadian patent practice.
Federal Court of Appeal opines on the framework for analyzing obviousness-type double-patenting | 24 novembre 2016
by: Shirley Liang Komosa
On November 4, 2016, the Federal Court of Appeal dismissed Apotex’s appeal in Apotex Inc v Eli Lilly Canada Inc, 2016 FCA 267 and upheld the Federal Court’s Order of prohibition for tadalafil (Eli Lilly’s CIALIS) regarding Patent No. 2,226,784 (“784 patent”)
Matthew Zischka to speak at AIPPI Canada’s 2016 Annual Meeting | 23 novembre 2016
Join Matthew Zischka on November 24th at the International Association for the Protection of Intellectual Property (AIPPI) Canada’s Annual Meeting and Lunch ‘n Learn Program in Montreal, QC.
The State of IP in Canada | 22 novembre 2016
by: David Schwartz
The Canadian Intellectual Property Office (“CIPO”) has issued a report entitled IP Canada Report 2016, discussing trends in IP use domestically, and by Canadians abroad, based on analysis of CIPO’s internal data and those collected by World Intellectual Property Organization.
Elliott Simcoe to speak on Intellectual Property at CCCA Webinar on November 22, 2016 | 17 novembre 2016
The biggest challenge many in-house counsel face is how to assess the quality of their company’s intellectual property so as to decide which innovations and marks deserve patent, trademark and design protection – and which do not.
Quebec announces coming into force of amendments to regulations regarding public display of non-French trademarks | 16 novembre 2016
by: Tomek Nishijima
The Quebec Minister of Culture and Communications has announced that proposed amendments to the regulations under the Charter of the French Language will come into force on November 24, 2016. The amendments are intended to ensure the presence of French language on the storefront of businesses that display non-French trademarks on public signs, while purporting to respect the trademark exception.
George Elvira and Julien Verneau to speak at BioConnect Symposium - From Bench to Bedside | 15 novembre 2016
Join George Elvira and Julien Verneau on November 18th where they will participate in the sixth annual BioConnect Symposium – From Bench to Bedside held by the McGill Biotechnology Graduate Students Society in Montreal, QC.
Supreme Court of Canada Reserves Decision on Utility of AstraZeneca's NEXIUM Patent | 08 novembre 2016
by Lynn Ing
The Supreme Court of Canada today heard oral arguments in AstraZeneca v Apotex and reserved its decision.
Donald Trump obtains initial victory defending Canadian lawsuit involving obligations of a licensor | 04 novembre 2016
by: Nicole Vidinu and Philip Lapin
Can a trademark licensor be held liable for the negligent actions of its licensee? In a decision involving United States presidential candidate Donald Trump, the Ontario Superior Court of Justice in Singh v Trump held that the egregious negligence of a licensee in this case did not provide a basis in law for imposing liability on a licensor.
Biggar’s delegates attending the International Trademark Association’s (INTA) 2016 Leadership Meeting | 03 novembre 2016
Smart & Biggar is pleased to have six delegates attending this year’s International Trademark Association’s Leadership Meeting.
Bill C-30 to implement CETA tabled in Canadian Parliament: implications for pharmaceuticals | 02 novembre 2016
by: Nancy P. Pei and Daphne C. Lainson
On October 31, 2016, the day following its signing, the Canadian Minister of International Trade, the Honourable Chrystia Freeland, tabled Bill C-30, An Act to implement the Comprehensive Economic and Trade Agreement between Canada and the European Union and its Member States and to provide for certain other measures. The following provides an overview of the main provisions specifically relevant to pharmaceuticals.
CETA Receives Approval - What IP owners need to know | 31 octobre 2016
by: Kevin Siu
Yesterday, Canada and the European Union officially signed the Comprehensive Economic and Trade Agreement (CETA), clearing the way for ratification. Canadian Prime Minister Justin Trudeau also indicated that Canada will seek to implement enabling legislation within the coming months.
Competition Tribunal weighs ‘abuse of dominant position’ provision against privacy and copyright protection | 28 octobre 2016
by: Daniel Hnatchuk
Recently the Competition Tribunal issued a ruling against the Toronto Real Estate Board, regarding their restrictions on the online use of Multiple Listing Service (MLS) data by realtors. The Commissioner of Competition had brought the complaint before the Tribunal on the basis of the abuse of dominant position provisions of the Competition Act. In finding that the Real Estate Board was acting in violation of these provisions, the Tribunal rejected the the Real Estate Board’s privacy and copyright arguments. Proceedings are currently before the Federal Court of Appeal.
FCA finds Minister reasonable: cross-referenced drug submissions did not trigger section 5 of the PMNOC Regulations absent early working | 27 octobre 2016
by: Abigail Smith
On October 12, 2016, the Federal Court of Appeal allowed four appeals relating to decisions by the Minister of Health to issue a notice of compliance (NOC) to Teva for exemestane tablets (a generic version of Pfizer’s AROMASIN) and an NOC to Hospira for INFLECTRA, an infliximab powder for solution (a biosimilar of Janssen’s REMICADE): Teva Canada Limited v Pfizer Canada Inc et al, 2016 FCA 248.
Connect with Smart & Biggar’s delegates attending the American Intellectual Property Law Association (AIPLA) 2016 Annual Meeting | 26 octobre 2016
Smart & Biggar is pleased to have nine delegates attending this year’s American Intellectual Property Law Association Annual Meeting.
Yoon Kang, Gunars Gaikis, and Sheldon Hamilton to speak at The Canadian Institute’s – 13th Forum on Pharma Patents | 25 octobre 2016
Join Yoon Kang, Gunars Gaikis, and Sheldon Hamilton at The Canadian Insittute’s 13th Forum on Pharma Patents at the Pantages Hotel Toronto Center in Toronto, Ontario on October 25th and 26th, 2016.
Gunars A. Gaikis to speak at C5’s Life Sciences IP Summit 2016 | 18 octobre 2016
Join Gunars A. Gaikis on October 21st where he will participate in C5’s third annual Life Sciences IP Summit 2016, taking place at the Hilton Paddington, London, United Kingdom
L’éminent avocat Norm Bacal se joint à Smart & Biggar à titre de coprésident du groupe stratégie en PI | 11 octobre 2016
TORONTO, le 11 octobre 2016 - Smart & Biggar, le plus important cabinet en matière de droit de la propriété intellectuelle et de la technologie au Canada, a annoncé aujourd’hui que Me Norm Bacal se joint à leur équipe. Basé à Toronto, Norm travaillera étroitement avec le directeur du bureau de Montréal, Me François Guay et devient également coprésident du groupe stratégie en PI.
Where IP intersects with competition law | 04 octobre 2016
According to a recent article in the Law Times, “The Competition Bureau’s first major update to its Intellectual Property Enforcement Guidelines in a generation marks a good opportunity for IP lawyers to re-acquaint themselves with their competition law colleagues”.
Canadian Thanksgiving, cranberry sauce, and the deadline to file a divisional patent application in Canada | 29 septembre 2016
by Tyler Nechiporenko and Alexandre Caya
Fun Fact 1: Unlike our American friends, Canadians celebrate Thanksgiving each year on the second Monday in October which this year falls on October 10. Fun Fact 2: This year, Canadians are expected to enjoy enough turkeys to stretch, beak to tail feathers, from Regina to Fredericton and enough loaves of bread to cover 31 hockey rinks. But what does any of this have to do with the deadline to file a divisional patent application in Canada?
Bayer prevails in drospirenone/ethinyl estradiol infringement action against Apotex and Cobalt | 26 septembre 2016
by Urszula Wojtyra
On September 9, 2016, Justice Fothergill of the Federal Court released a decision finding that Apotex Inc. and Cobalt Pharmaceuticals Company each infringed Bayer’s valid patent for an oral contraceptive composition combining drospirenone and ethinyl estradiol (Bayer’s YAZ and YASMIN) (2016 FC 1013). Apotex markets MYA (approved on the basis of a comparison to YAZ) and ZAMINE (approved on the basis of a comparison to YASMIN) and Cobalt marketed ZARAH (approved on the basis of a comparison to YASMIN).
Mark Evans and Philip Lapin to speak at IPIC’s 90th Annual Meeting | 23 septembre 2016
Join Mark Evans and Philip Lapin on Friday September 30th when they will participate in IPIC’s 90th Annual Meeting , taking place at the Fairmont Le Chateau Frontenac in Quebec City, Quebec.
How to choose and vet an expert witness in patent cases | 23 septembre 2016
Expert evidence plays a critical role in patent litigation, and can literally make or break a case. That’s why it is important for counsel to properly identify, select, and prepare expert witnesses in order to put the party’s best case forward. This process is often time-consuming and challenging because, to be effective, an expert witness must be able to offer his or her opinions in an independent and objective manner that will assist the court.
Ekaterina Tsimberis, a speaker at the 2016 International Wine Law Association/AIDV Conference | 16 septembre 2016
Ekaterina Tsimberis, a speaker at the 2016 International Wine Law Association/AIDV Conference
Canadian Federal Court of Appeal denies third party intervention in appeal of Trademark challenge | 14 septembre 2016
By: Renaud Garon-Gendron The recent decision of the Federal Court of Appeal in Sport Maska Inc v Bauer Hockey Corp (2016 FCA 44), provides clarification on the applicable test for leave to intervene in proceedings before the Federal Court. The underlying case is also a reminder that businesses can request by way of a simple and inexpensive procedure that registered trademarks of their competitors be removed from the Register if no longer in use.
Trois professionnels deviennent agent de brevets | 12 septembre 2016
Smart & Biggar/Fetherstonhaugh est fier de vous annoncer que trois de ses professionels, Jean-Sébastien Dupont, Nelson Godfrey et Tyler Nechiporenko, ont réussi les examens de compétence pour devenir agent de brevets et peuvent maintenant pratiquer au Canada.
Dow prevails over Nova in appeal of polymer patent suit | 08 septembre 2016
by Daniel Davies
On September 6th, 2016 The Federal Court of Appeal upheld a Federal Court decision finding Nova Chemicals Corporation (“Nova”) liable for infringement of a patent owned by The Dow Chemical Company (“Dow”) by Nova’s manufacture and sale of its SURPASS film-grade polymers (2016 FCA 216).
Smart & Biggar welcomes five new associates | 29 août 2016
Smart & Biggar/Fetherstonhaugh is pleased to welcome five new associates: Alexandre Caya, Brandon Heard, Daniel Hnatchuk, Shirley Liang Komosa, and Kevin Unrau
Official marks can be challenged by judicial review | 25 août 2016
by Philip Lapin and Daniel Hnatchuk
Domain name solicitation fraud – brand owners beware | 03 août 2016
by Daniel Anthony It is a modern reality that with brand ownership comes the risk of trademark and domain name fraud. In this area, there has recently been a rise in email scams targeting brand owners by falsely claiming that domain name rights are in jeopardy. As these scams become more common, all trademark owners should be aware of how to recognize and avoid them.
Tamara O’Connell awarded the IPIC prize for the highest overall mark in the 2015 Canadian Patent Agent Examination | 03 août 2016
We are pleased to announce, Tamara O’Connell, an associate with the Toronto office has achieved the highest overall mark in the 2015 Patent Agent Examination. Tamara will be awarded the J. Edward Maybee Memorial Prize during the Gala Dinner at the Institute’s Annual Meeting which will take place this year at the Fairmont Château Frontenac in Québec City from September 28 to 30, 2016.
Congratulations to Gunars Gaikis on being named the 2017 Biotechnology Law “Lawyer of the Year” in Toronto by Best Lawyers | 02 août 2016
We are pleased to announce that Gunars Gaikis, a partner in our Toronto office, has been named by Best Lawyers® as the 2017 Biotechnology Law "Lawyer of the Year" in Toronto. Gunars Gaikis is one of Canada’s premier and most experienced life sciences intellectual property litigators. He has more than 25 years of experience in the highly specialized field of pharmaceutical patent, trademark and related litigation.
Smart & Biggar's Toronto office has moved | 28 juillet 2016
We are pleased to announce that our Toronto office has relocated to the heart of the commercial and financial district.
Federal Court prohibits issuance of NOC to Teva for atazanavir sulfate, prior genus patent does not anticipate compound claim | 27 juillet 2016
by: Kevin Siu On June 8, 2016, the Federal Court issued an order under the Patented Medicines (Notice of Compliance) Regulations prohibiting the Minister of Health from issuing a notice of compliance to Teva for atazanavir sulfate (Bristol-Myers Squibb’s (BMS) REYATAZ) until expiry of Novartis AG’s Patent No. 2,250,840 (“840 patent”): Bristol-Myers Squibb Canada Co v Teva Canada Limited, 2016 FC 580. The Court dismissed the prohibition application relating to BMS’s Patent No. 2,317,736 (“736 patent”).
Commissioner’s Decision clarifies support requirements for humanized antibodies, signalling change in CIPO practice | 21 juillet 2016
By: Thuy H. Nguyen The Manual of Patent Office Practice discusses antibodies as a “special topic”; no other molecule is set apart this way. The Commissioner’s Decisions CD 1302 on monoclonal antibodies and the recent CD 1398 on humanized antibodies, indicate that the Canadian Intellectual Property Office (CIPO) is becoming more amenable to treating antibody inventions according to the same rules that apply to other molecules.
The top ten reasons to register your brand in Canada. Now! | 14 juillet 2016
by Graham Hood
Canada is a critically important market for brand owners, particularly for those looking to break into North America and capitalize on Canada’s strong trade relationship with the U.S. If your brand protection strategy does not include Canada, consider the top ten reasons to register your brand in Canada today.
Playing by the rules – Ambush marketing and the Olympic Games | 06 juillet 2016
by Nicole Vidinu
The Olympic Games represent one of the biggest opportunities for a company to increase exposure of its brands to consumers on a global scale over a concentrated period of time. With the Rio 2016 Summer Olympic Games around the corner, many Canadian and other companies from around the world are seeking to take advantage of this small window of opportunity to promote their brands. However, brand owners must understand how to play by the rules when it comes to the Games.
Reasons to register industrial designs in Canada | 29 juin 2016
by Lionel Fishman
Industrial designs have never been more important. In today’s highly competitive marketplace, a product’s design may be just as important as its technologically advancement. In recognition of World Industrial Design Day, we are highlighting reasons to register industrial designs in Canada.
Patent and trademark agent privilege recognized | 22 juin 2016
by Artemis Lai
On June 24, 2016, the much anticipated amendments to the Patent Act and Trademarks Act recognizing patent agent privilege and trademark agent privilege will come into force.
Competition Bureau alleges that proudly Canadian company Moose Knuckles may not be so Canadian | 16 juin 2016
by Andrea Kroetch
The Competition Bureau has taken action against Canadian outerwear company Moose Knuckles for allegedly falsely claiming that their premium winter jackets are “Made in Canada”. In the application filed with Competition Tribunal, the Bureau claims that the company has engaged in deceptive marketing practices under the Competition Act for marketing their premium winter jackets as “Made in Canada” when in fact the jackets are substantially made in Vietnam and other Asian countries.
Federal Court of Appeal overturns Teva’s venlafaxine section 8 award for improper reliance on hearsay evidence | 14 juin 2016
by Abigail Smith On May 31, 2016, the Federal Court of Appeal set aside a decision of the Federal Court awarding Teva damages under section 8 of the Patented Medicines (Notice of Compliance) Regulations (PMNOC Regulations) in relation to its venlafaxine hydrochloride product (Pfizer’s Effexor XR) on the basis that the judge had improperly relied on hearsay evidence (2016 FCA 161). The matter was remitted to the Federal Court for redetermination, excluding the hearsay evidence. The Court also provided guidance on a number of other issues, including how to determine lost sales in the “but-for” world and the burden of proof in section 8 actions.
Federal Court grants Janssen close to $20 million against Teva for infringement of levofloxacin patent | 14 juin 2016
by Kevin Siu The Federal Court on May 31, 2016 issued its public judgment in Janssen Inc v Teva Canada Ltd, 2016 FC 593, for the quantification of damages arising from infringement of Daiichi Sankyo’s Patent No. 1,304,080 for levofloxacin (LEVAQUIN). In the earlier liability phase of the action, Teva (then Novopharm) was held liable for damages for patent infringement (Janssen-Ortho Inc v Novopharm Ltd, 2006 FC 1234, aff’d 2007 FCA 217, leave to appeal refused  SCCA No 442).
Timothy Stevenson to speak at the International Legal Alliance Summit Awards 2016 | 14 juin 2016
On Thursday, June 16, 2016, Timothy Stevenson will discuss intellectual property trends in North America at the International Legal Alliance Summit Awards 2016 taking place in New York.
Canadian Intellectual Property Office conducting consultations on the proposed changes to current trademark and patent fees | 10 juin 2016
by David Schwartz and Tomek Nishijima
On June 6, 2016, the Canadian Intellectual Property Office (CIPO) released consultation documents concerning trademark fees and patent fees, which set out its proposed fee changes resulting from the amendments to the Canadian Trademarks Act and Patent Act. The deadline to submit comments is July 5, 2016.
Federal Court issues interlocutory injunction directed at retailers of set-top boxes loaded with copyright infringing applications | 07 juin 2016
by Guillaume Lavoie Ste-Marie
On June 1, 2016, Madam Justice Tremblay-Lamer of the Federal Court issued an interlocutory injunction against retailers of set-top boxes that are configured, or “pre-loaded”, with various applications that provide their users with unauthorized access to copyrighted television content. The Plaintiffs were successfully represented by François Guay and Guillaume Lavoie Ste-Marie of Smart & Biggar’s Montreal office.
The intersection between the Precious Metals Marking Act and the Trademarks Act in Canada: marking of precious metal articles | 01 juin 2016
by Nelson Godfrey
Dealers in jewellery and other articles made from precious metals commonly use standardized indications of quality, called “quality marks” in some countries and “hallmarks” in others, to readily indicate to consumers and regulators that the article is a precious metal article having the claimed attributes. By way of the Precious Metals Marking Act (“PMMA”), such quality marks are regulated in Canada to provide for the uniform description and quality marking of precious metal articles and to help ensure that articles are not marked in any manner that is misleading or deceptive.
Managing & leveraging intellectual property: reasons to pursue patent protection in Canada | 27 mai 2016
by Jeffrey Coles
In managing patent portfolios, whether small or large, an overarching and important question is where to pursue patent protection. Canada’s patent system can be used strategically to create business value and to help companies achieve their objectives, including managing IP costs, tailoring scope of protection, and influencing their competitors’ activities.
The Canadian Competition Bureau releases revised Intellectual Property Enforcement Guidelines | 18 mai 2016
by Andrea Kroetch
The Competition Bureau has recently released a revised version of its Intellectual Property Enforcement Guidelines. The Guidelines describe the Bureau’s approach to conducting investigations under the Competition Act in respect of anti-competitive activities that relate to intellectual property. The primary revisions, which represent the Bureau’s first major update since the IPEGs original release in 2000, include clarification on the Bureau’s position on patent settlements, product switching, the conduct of patent assertion entities, and conduct involving standard essential patent owners.
Federal Court of Appeal clarifies test for double-patenting | 12 mai 2016
by Kevin Siu
On April 20, 2016, the Federal Court of Appeal issued its decision in Mylan Pharmaceuticals ULC v Eli Lilly Canada Inc, 2016 FCA 119, a case relating to tadalafil (Eli Lilly’s CIALIS). In dismissing the appeal, the Court of Appeal clarified the test for obviousness-type double patenting and addressed the relevant date for the double-patenting analysis. The Court also made some important remarks on use of prior art, and on the distinction between prior art and common general knowledge.
Quebec proposes amendments to regulations regarding the public display of non-French trademarks | 09 mai 2016
by Christian Bolduc
In recent years, the Office québécois de la langue française (“OQLF”) and the Quebec Government have unsuccessfully tried to force owners of non-French trademarks to add descriptive language in French to their public signs displaying non-French trademarks, even though the regulations under the Charter of the French language (“Charter”) provide an exception for recognized trademarks in a language other than French. On May 4, 2016, the Quebec Minister of Culture and Communications proposed amendments to the regulations under the Charter to ensure the presence of French language on the storefront of businesses that display non-French trademarks on public signs, while purporting to respect the trademark exception.
Mark Evans and Matthew Zischka to speak at CPDonline’s inaugural Business Law and Legal Issues Facing Finance Professionals conference | 03 mai 2016
Join Mark Evans and Matthew Zischka on Friday, May 6th when they will participate in CPDonline’s inaugural Business Law and Legal Issues Facing Finance Professionals conference, taking place at the Ivey Tangerine Leadership Centre in Toronto.
Federal Court permits quia timet infringement claim to proceed | 14 avril 2016
by Abigail Smith The test for sustaining a patent infringement action based on quia timet patent infringement (i.e. a claim based on likely future infringement) requires that the claim allege a deliberate expressed intention to engage in activity the result of which would raise a strong possibility of infringement; the activity must be alleged to be imminent and the resulting damage to the plaintiff must be alleged to be very substantial if not irreparable; and the facts pleaded must be cogent, precise and material: Connaught Laboratories Ltd v Smithkline Beecham Pharma Inc, 158 FTR 194. To date, very few such patent infringement actions have survived a motion to strike. As a result, most infringement actions are commenced only after the alleged infringer has received its notice of compliance (NOC) and/or has launched.
Strategies for protecting your brand from trademark trolls in Canada | 07 avril 2016
by Nicole Vidinu
Are trademark trolls a threat to brand owners in Canada? With significant amendments to the Canadian Trademarks Act on the horizon in light of Bill C-31, and in particular the upcoming elimination of the requirement to claim or declare use of a mark before obtaining a registration, these legislative changes may be opening the door to trademark trolls.
Competition Bureau releases updated Intellectual Property Enforcement Guidelines | 01 avril 2016
by Andrea Kroetch
On March 31, 2016, the Competition Bureau released a final updated version of its Intellectual Property Enforcement Guidelines (“IPEGs”) following an extensive public consultation process. The IPEGs describe the Bureau’s approach to conducting investigations of alleged anti competitive activities that relate to intellectual property. The primary revisions to the guidelines include clarification on the Bureau’s position on patent settlements, product switching, the conduct of patent assertion entities and conduct involving standard essential patent owners.
Federal Court holds issued patent valid despite erroneous issue fee payment | 31 mars 2016
by Julien Verneau
In a February 4, 2016 decision, Apotex Inc v Pfizer Inc (“Apotex”), 2016 FC 136, the Federal Court found that an erroneous underpayment of a “final fee” to issue a patent did not invalidate the issued patent. In so doing, the Court distinguished between substantive breaches of the statute that go to the heart of the patent and administrative breaches of the statute in dealings with the Canadian Intellectual Property Office (CIPO).
Federal Court of Appeal seeks to clarify law relating to trademarks descriptive or misdescriptive of geographical origin | 16 mars 2016
by Nelson Godfrey
In MC Imports Inc v AFOD Ltd, 2016 FCA 60, the Federal Court of Appeal revisited the issue of whether geographically descriptive words are registrable as trademarks or whether they are prohibited by section 12(1)(b) of the Canadian Trademarks Act. The decision, coming less than three months after the decision of the Federal Court of Appeal in similar factual circumstances in Lum v Dr Coby Cragg Inc, 2015 FCA 293, represents an attempt by the Federal Court of Appeal to provide guidance with respect to the registrability of trademarks that describe places of origin of their goods or services.
Legal review of CETA completed by Canada and European Union; likely in force in 2017 | 11 mars 2016
by Kevin Siu
On February 29, 2016, Canada’s Minister of International Trade (Chrystia Freeland) and the European Commissioner for Trade (Cecilia Malmström) announced that the legal review of the Canada-European Union Comprehensive Economic and Trade Agreement (CETA) has been completed. As part of the review, modifications were made to the investment chapter of CETA relating to provisions on governments’ right to regulate and the structure and process relating to the dispute-settlement tribunal. As previously reported, CETA will have an impact on pharmaceutical product protection in Canada. In particular, the key provisions include:
Supreme Court of Canada to hear appeal on patent utility | 10 mars 2016
by Yoon Kang
The Supreme Court of Canada has today granted AstraZeneca leave to appeal a Federal Court of Appeal decision, affirming a trial decision invalidating its patent relating to its successful esomeprazole drug (NEXIUM) for lack of utility. The patent utility requirement in Canada has been the subject of controversy and debate. The appeal will present the Supreme Court with an opportunity to consider whether a promised utility doctrine properly exists, and the correct applicable standard for patent utility in Canada. AstraZeneca is represented on the appeal by a team from Smart & Biggar, including Gunars Gaikis, Yoon Kang and Lynn Ing.
Sheldon Hamilton to speak at C5’s 8th Annual Pharmaceutical & Biotech Patent Litigation Conference | 07 mars 2016
Proving use in Canadian trademark cancellation proceedings: Registrant discovers that “ancillary services principle” has its limits, as registered services held not to have been performed in Canada | 01 mars 2016
by Graham Hood
The recent decision of the Federal Court in SuperShuttle International, Inc v Fetherstonhaugh & Co, 2015 FC 1259, is a helpful reminder to registered rights holders of the dangers of not using their trademarks in association with the specific goods or services covered by their registrations. In this case, the registrant, SuperShuttle International, Inc. (“SuperShuttle”), appealed from a decision of the Registrar of Trade-marks, which had concluded that SuperShuttle had not used its registered trademark SUPERSHUTTLE in Canada in connection with its registered “[a]irport passenger ground transportation services”, having found that its “ancillary” reservation services did not amount to the “transportation services” themselves. Consequently, the registrant’s SUPERSHUTTLE trademark was found to be “deadwood”, and expunged from the trademarks register pursuant to section 45 of the Trade-marks Act.
Impact of failure to disclose an inventor’s public servant status on patent validity | 25 février 2016
by Christopher Thompson
Every Canadian public servant who makes an invention is required to disclose that the inventor is a public servant in any patent application filed for the invention. The Canadian Federal Court of Appeal has recently considered, in Brown v Canada, 2016 FCA 37, whether failing to make the required disclosure in the patent application resulted in “an untrue material allegation” which could invalidate the patent.
Sheldon Hamilton to participate in a panel discussion during TIPG's: Hot Topics in Pharma Patent Cases | 25 février 2016